District Judge Jed Rakoff denied defendant Microscan’s motion for summary judgment that claims 1 and 30 of U.S. Patent 7,874,487 (“the ’487 patent”) are invalid for indefiniteness under 35 U.S.C. § 112 ¶ 2. Microscan based its indefiniteness argument on the court’s denial of Microscan’s earlier motion for summary judgment of non-infringement.
On December 31, 2013, the court denied Microscan’s motion for summary judgment that its Mobile Hawk product did not infringe claims 1 and 30 of the ’487 patent. The court found that there were genuine issues of fact as to whether the Mobile Hawk’s “light prism” constituted a “light pipe” covered by the claims, and “whether the light transmitted through the light prism was ‘internally reflected along the pipe.’” The court was unable to ascertain infringement “due to the insufficient evidence presented,” “which consisted primarily of a textual description of the product and two two-dimensional depictions of the product.”
In the instant motion, Microscan argued that since the court had previously “construed the relevant claim terms of the ’487 patent – ‘light pipe’ and ‘internally reflected along the pipe,’” the court’s inability to conclude whether the Mobile Hawk product infringed the claims on summary judgment “means that the claims at issue lack a ‘discernible boundary’ and are therefore invalid as indefinite.” The court did not agree with Microscan that “definiteness is connected with a potential infringer’s ability to ascertain whether its products infringe the claims of a patent.” Rather, the court noted that “Federal Circuit precedent makes clear that ‘[t]he test for indefiniteness does not depend on a potential infringer’s ability to ascertain the nature of its own accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention.’” The court held that it reduced the claim terms to words, and one of ordinary skill in the art can translate the definition into meaningfully precise claim scope.
Case: Cognex Corp. v. Microscan Sys., Inc., No. 13 Civ. 2027 (JSR) (S.D.N.Y. Apr. 7, 2014). (cf. Cognex Corp. v. Microscan Systems, Inc., Dec. 31, 2013)