In Interval Licensing LLC v. AOL, Inc., the Federal Circuit applied the test for patent indefiniteness set forth in the recent Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, and found that claims reciting an “unobtrusive” display were invalid. In so doing, the Federal Circuit noted the “highly subjective” nature of the claim language and lack of guidance in the specification and prosecution history as to the meaning of the term.
The Patents at Issue
The patents at issue were Interval’s U.S. 6,034,652 and U.S. 6,788,314, directed to an “attention manager for occupying the peripheral attention of a person in the vicinity of a display device.” As summarized by the Federal Circuit, the patents “describe a system that acquires data from a content provider, schedules the display of the content data, generates images from the content data, and then displays the images on a device.” The patents use the term “image” broadly as including both visual and audio imagery, and indicate that the user could be human or other animal (such as “dogs, cats and parrots”). The patents describe two main embodiments, a “screen saver” embodiment that displays the images during a period of inactivity, and a “wallpaper” embodiment that displays the images on the background of a screen.
The Federal Circuit identified claim 1 of the ’314 patent as representative of the claims with the “unobtrusive” language:
A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of:
providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device;
providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and
auditing the display of sets of content data by the content display system;
wherein the one or more sets of content data are selected from a plurality of sets of content data ….
The district court determined that the phrases “in an unobtrusive manner” and “does not distract” a user were indefinite because “the patents fail to provide an objective standard by which to define the scope [of the terms]” and because infringement would depend on “usage in changing circumstances.”
The Federal Circuit Decision
The Federal Circuit decision was authored by Judge Chen and joined by Judge Taranto. (Retired Judge Rader originally sat on the panel but did not participate in the decision.)
The Federal Circuit cited the Supreme Court’s Nautilus decision for this statement of the definiteness requirement of 35 U.S.C. § 112, second paragraph:
A claim fails to satisfy this statutory requirement and is thus invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
*****
What the statute requires … “is that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”
The Federal Circuit noted that a claim term that includes “a term of degree” is not “inherently indefinite.” However,
The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.
Turning to the claim language at issue, the Federal Circuit noted that the “‘unobtrusive manner’ phrase is highly subjective and, on its face, provides little guidance to one of skill in the art.” The court stated further, “[t]he lack of objective boundaries in the claim language is particularly troubling in light of the patents’ command to read “the term ‘image’ . . . broadly to mean any sensory stimulus … including sounds and video.” The Federal Circuit cited Datamize, LLC v. Plumtree Software, Inc. (Fed. Cir. 2005) for the proposition that “a term of degree fails to provide sufficient notice of its scope if it depends ‘on the unpredictable vagaries of any one person’s opinion.’”
Finding no guidance in the claims, the Federal Circuit turned to the specification, but also found insufficient guidance there. The Federal Circuit rejected Interval’s argument that the “unobtrusive manner” term was “tied exclusively to the wallpaper embodiment” and so had “only a spatial meaning.” The court found that the specification indicated that both the wallpaper embodiment and the screen saver embodiment were “further aspects” of an “attention manager that displays content ‘in an unobtrusive manner.’”
Although Interval disputes this reading, we find that the specification is at best muddled, leaving one unsure of whether the “unobtrusive manner” phrase has temporal dimensions as well as spatial dimensions. The hazy relationship between the claims and the written description fails to provide the clarity that the subjective claim language needs.
The Federal Circuit found that the prosecution history also was unclear, with Interval asserting that “the display of images in an unobtrusive manner” could be implemented in a screen saver context (contrary to its position on appeal) while both the examiner and the reexamination examiner appeared to discuss it only in the context of the wallpaper embodiment.
The Federal Circuit also rejected Interval’s alternative argument that the “unobtrusive manner” term should be construed in accordance with a narrow statement in the Summary of the Invention section of the patents:
[T]he information can be presented to the person during active periods (i.e., when a user is engaged in an intensive interaction with the apparatus), but in an unobtrusive manner that does not distract the user from the primary interaction with the apparatus (e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus).
The Federal Circuit found:
In this case … we decline to cull out a single “e.g.” phrase from a lengthy written description to serve as the exclusive definition of a facially subjective claim term. …. Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by “i.e.” instead of “e.g.”—then it would help provide the clarity that the specification lacks. But as the specification is written, we agree with the district court that a person of ordinary skill in the art would not understand the “e.g.” phrase to constitute an exclusive definition of “unobtrusive manner that does not distract a user.”
The Federal Circuit therefore held that the “unobtrusive manner that does not distract a user” phrase, when viewed in light of the specification and prosecution history, fails to “inform those skilled in the art about the scope of the invention with reasonable certainty,” and so renders the claims invalid as indefinite.
Insolubly Uncertain?
Although the Federal Circuit analyzed the claims under the “reasonable certainty” test of Biosig v. Nautilus, the district court had found the claims invalid under earlier precedent. Thus, this case does not shed much light on whether there is a meaningful difference between claims that are “insolubly ambiguous” and claims that lack “reasonable certainty.” However, the decision is a good reminder of the risks associated with subjective claim language, and the importance of providing an objective metric against which infringement can be assessed.