Case Name/Info:

SONIX TECH. CO. v. PUBLICATIONS INT’L, LTD.: Jan. 5, 2017. Before Lourie, O’Malley, and Taranto.

Takeaway:

  • Claims involving terms of degree are not inherently indefinite, and have been found definite where they provide enough certainty to one of skill in the art when read in the context of the invention.

Procedural Posture:

Sonix appealed of Northern District of Illinois’ finding of indefiniteness and summary judgment of invalidity. CAFC reversed.

Synopsis:

  • Indefiniteness: The term “visually negligible” did not render claim terms invalid as indefinite because a skilled artisan would understand, with reasonable certainty, what it means for an indicator in the claimed invention to be “visually negligible.” Claims involving terms of degree are not inherently indefinite, and have been found definite where they provide enough certainty to one of skill in the art when read in the context of the invention. While the claim language did not unmistakably make clear the scope of “visually negligible,” the written description, which “is key to determining whether a term of degree is indefinite,” provided examples and specific requirements which clarified the claim term. That the claim term is not indefinite was also supported by the prosecution history. During the prosecution history, including reexamination, the examiners did not find the claim terms indefinite. In addition, the experts and parties involved in the litigation seemed to understand the meaning of the term “visually negligible” during the litigation.