Interval Licensing LLC v. AOL, Inc.
Providing further elaboration on the “reasonable certainty” standard in an indefiniteness analysis involving a term of degree, the U.S. Court of Appeals for the Federal Circuit affirmed a district court’s ruling of indefiniteness, finding that no objective indication of the claim scope was provided by the patent. Interval Licensing LLC v. AOL, Inc. 766 F.3d 1364 (Fed. Cir., Sept. 10, 2014) (Chen, J.).
Interval Licensing (Interval) sued AOL, Apple, Google, and Yahoo! for infringement of its patents directed to a system for occupying the peripheral attention of a person in the vicinity of a display device. The suit alleged that defendants infringed the patents through products and software that use “pop-up” notifications to present information to users. The patents disclosed 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.” According to the claims, the images are not simply displayed on the device, rather, the images are displayed “in an unobtrusive manner that does not distract a user.” The intent was that the images would occupy the peripheral attention of a user in the vicinity of the display device and not interfere with the user’s primary interaction with the device. The district court found the phrase “unobtrusive manner” indefinite during claim construction and the patents invalid as a result. Interval appealed.
Under the Supreme Court’s 2014 decision in Nautilus (IP Update, Vol. 17, No. 6), a claim fails to satisfy the § 112, ¶ 2 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.” Applying the standard set forth in Nautilus, the Federal Circuit affirmed the district court’s finding of indefiniteness. The Federal Circuit analyzed whether the patents provided objective boundaries on the phrase “unobtrusive manner,” such that one of ordinary skill in the art could understand the bounds with certainty. The Court observed that the “unobtrusive manner” language was “highly subjective and, on its face, provide[d] little guidance to one of skill in the art” and that no objective indication of the manner in which content was to be displayed without distracting the user was presented.
Turning to the specification and prosecution history, the Federal Circuit concluded that those too failed to provide sufficient guidance. Critically, the Court noted that the specification gave only a single example of the manner in which content could be displayed in an “unobtrusive manner.” Had the example in the specification instead been cast as definitional language, it would have provided the needed objective boundary. But with only a single example, a skilled artisan is left wondering what other forms of display are unobtrusive and non-distracting.
The Federal Circuit reiterated that terms of degree are not inherently indefinite, but cautioned that a term of degree fails to provide sufficient notice of its scope when it depends “on the unpredictable vagaries of any one person’s opinion.” In sum, the “unobtrusive manner” phrase, when viewed in light of the specification and prosecution history, failed to “inform those skilled in the art about the scope of the invention with reasonable certainty.”