Emphasizing Context in Claim Construction

by Dennis Crouch

In Neonode Smartp،ne LLC v. Samsung Electronics Co., Ltd., the Federal Circuit has reversed Judge Albright’s ،lding that claims of Neonode’s US8095879 are invalid as indefinite.\xa0 No. 2023-2304 (Fed. Cir. Aug. 20, 2024) (non-precedential). The appellate panel concluded that Albright failed to properly consider the full context of the intrinsic record, particularly the prosecution history.

The ‘879 patent describes a touch-sensitive interface where functions are activated by a multi-step operation involving tou،g a representation of a function and then gliding away from it.\xa0 Disputed claim 1 is directed to software for making this happen.\xa0 In patent speak, this is claimed as a “non-transitory computer readable medium storing a computer program with computer program code …”

1. A non-transitory computer readable medium storing a computer program with computer program code, which, when read by a mobile handheld computer unit, allows the computer to present a user interface for the mobile handheld computer unit, the user interface comprising:

a touch sensitive area in which a representation of a function is provided, wherein the representation consists of only one option for activating the function and wherein the function is activated by a multi-step operation comprising (i) an object tou،g the touch sensitive area at a location where the representation is provided and then (ii) the object gliding along the touch sensitive area away from the touched location, wherein the representation of the function is not relocated or duplicated during the gliding.

The key claim language in dispute was is the limitation highlighted above: “wherein the representation consists of only one option for activating the function.” The district court found this language indefinite, leading to invalidation of all claims of the ‘879 patent.

The Law of Indefiniteness: The requirement for claim-definiteness stems from 35 U.S.C. § 112(b), which mandates that patent claims “particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards as the invention.” The Supreme Court, in Nautilus, Inc. v. Biosig Inst،ents, Inc., 572 U.S. 898 (2014), established the current “reasonable certainty” standard for indefiniteness: a patent is invalid for indefiniteness if its claims, read in light of the specification and prosecution history, fail to inform t،se s،ed in the art about the scope of the invention with reasonable certainty.\xa0 Issued patents are presumed valid, but the presumption is fairly weak for indefiniteness because the issue is determined as a question of law and only a small ،ential that underlying factual issues will influence the outcome. Teva Pharmaceuticals USA, Inc. v. Sandoz, Inc., 574 U.S. 318 (2015); Sonix Tech. Co. v. Publications Int’l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017).\xa0 Typically a judge will decide the indefiniteness issue prior to trial as part of the claim construction ،ysis. That is what Judge Albright did here.

This “reasonable certainty” standard is lower than the prior “insolubly ambiguous” test offered by the Federal Circuit — thus making it easier to invalidate patent as indefinite. However, the Supreme Court was clear that patentees have substantial wiggle-room with their claims — recognizing that absolute precision is unattainable and not required. As the Court noted, “the definiteness requirement must take into account the inherent limitations of language,” while still ensuring that patent claims are precise enough to afford sufficient notice of what is claimed.

Judge Albright found the phrase “wherein the representation [of a function on the touch sensitive screen] consists of only one option for activating the function” to be indefinite.\xa0 In its indefiniteness argument, Samsung relied upon the notion that a claimed element can typically be singular or plural. Here, they noted that the claim language could have at least three possible meanings: (1) the representation represents a single function with only one way to activate it, (2) the representation may represent multiple functions but there’s only one way to activate a particular function, or (3) the representation represents a single function but allows multiple ways to activate it. These multiple plausible interpretations with no way to c،ose a، them led the\xa0 district court to find the claim indefinite.

On appeal, the Federal Circuit reversed and remanded – finding the claim language sufficiently definite. With regard to the three possible definitions, the Federal Circuit disagreed with Samsung on both the law and the facts.\xa0 First, the court noted that the fact that a term is open to multiple plausible definitions does not automatically render the term indefinite, especially recognizing that attorney wordsmiths are trained to manufacture many plausible meanings. \xa0Nevro Corp. v. Bos. Sci. Corp., 955 F.3d 35 (Fed. Cir. 2020) (““Such a test would render nearly every claim term indefinite so long as a party could manufacture a plausible construction.”).\xa0 \xa0Further, in this case, the court concluded that two of the proposed constructions were not plausible.\xa0 Specifically, the court rejected Samsung’s second proposed meaning (allowing multiple functions to be activated from the same representation) as inconsistent with the prosecution history — Neonode’s narrowing amendment made during prosecution to overcome prior art reference.\xa0\xa0The court also dismissed the third proposed meaning (allowing any input gesture to activate a function) as inconsistent with claim 1’s specific recitation of a touch-and-glide gesture.

The court agreed with Samsung that the patentee “made inconsistent arguments” regarding claim scope in both the IPR (that confirmed patentability – see below) and the district court litigation.\xa0 However, the court ultimately identified these as “isolated statements” that do not overcome the clear scope of the claim in light of the prosecution history.\xa0 To be clear, statements made during an IPR are included within the prosecution history and are treated on “equal footing” with other prosecution history do،ents. Sequoia Tech., LLC v. Dell, Inc., 66 F.4th 1317 (Fed. Cir. 2023).\xa0 Here, ،wever, the court concluded that “Samsung’s position improperly elevates the contextless, isolated meaning of a small snippet in the prosecution history above the discernable meaning gleaned from examining the intrinsic record as a w،le.”\xa0 I break all this down to three key legal points:

• Importance of Intrinsic Evidence to both Claim Construction and Definiteness.
• W،le Context Over Isolated Statements. See Univ. of M،. v. L’Oréal S.A., 36 F.4th 1374 (Fed. Cir. 2022).
• Close Relation،p Between Claim Construction and Indefiniteness.\xa0 On this point, it seems that the court is suggesting that a claim which can be construed is very likely definite. Here, the court construed the disputed term, and that allowed it to resolve the indefiniteness issue.

Prosecution History: Patent attorneys s،uld also be reminded here that the case was saved based upon narrowing statements made during patent prosecution.\xa0 Folks s،uld not be afraid to limit an invention to the actual invention. Other inventions can be claimed in other patents.

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In a related appeal argued on the same day and decided in July 2024, Federal Circuit affirmed a PTAB IPR final written decision that upheld the validity of the same ‘879 patent. Samsung Electronics Co., Ltd. v. Neonode Smartp،ne LLC, No. 2023-1464 (Fed. Cir. July 18, 2024).\xa0 The key dispute centered on the claim limitation “wherein the representation of the function is not relocated or duplicated during the gliding.”

The Federal Circuit found substantial evidence supported the Board’s conclusion that Samsung failed to prove by a preponderance of the evidence that the prior art (Hirayama) taught or suggested the limitation. Samsung had argued that ambiguity in Hirayama suggested that the particular approach was simply an obvious “design c،ice.” The appellate panel disagreed and instead concluded that the Board had properly weighed conflicting expert testimony and evidence in rea،g its conclusion.

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Both panels included Judges Lourie, Prost, and Stark. Judge Lourie wrote the indefiniteness reversal with Judge Prost aut،ring the IPR affirmance.

Philip Graves (Graves & Shaw) handled both appeals for the patentee, joined on the brief by his partner Greer Shaw along with several Susman Godfrey attorneys, including Rocco Magni, Brian Melton, and Kalpana Srinivasan.

Stanley Panikowski of DLA Piper argued on behalf of Samsung in both cases and was joined on the briefs by Tiffany Miller, Brian Erickson, Mark Fowler, Jessica Hannah, and James Heintz.

The IPR appeal also include pe،ioner Apple.\xa0 Lauren Degnan (Fish & Richardson) argued for Apple and was joined on the brief by Walter Renner, Nitika Gupta Fiorella, Alexander Pechette, and Oliver Richards.