On February 25, 2014, ALJ E. James Gildea issued Order No. 58 denying Complainant’s motion for summary determination that the asserted claim terms are valid under 35 U.S.C. § 112 ¶¶ 1 and 2 in Certain Integrated Circuit Devices and Products Containing the Same (Inv. No. 337-TA-873).
By way of background, the investigation is based on a complaint filed by Complainant Tela Innovations, Inc. (“Tela”) alleging violation of Section 337 in the importation into the U.S. and sale of certain integrated circuit devices and products containing the same that infringe one or more claims of U.S. Patent Nos. 8,264,049; 8,264,044; 8,258,550; 8,258,547; 8,217,428; 8,258,552; and/or 8,030,689. See our February 11, 2013 and March 14, 2013 posts for more details on the complaint and the Notice of Investigation, respectively.
According to the Order, Tela filed a motion for summary determination that the claims of the asserted patents are valid under 35 U.S.C. § 112 ¶¶ 1 and 2 because (1) the specifications of the asserted patents provide sufficient written description to set forth the scope of the invention, and (2) the claim terms are amenable to construction and also set forth the scope of the invention such that they are not indefinite. Respondents opposed the motion. Tela later filed a notice of partial withdrawal of its motion for summary determination indicating that it only sought summary determination that the asserted claims are definite with respect to the use of relative terms, such as “about” and “substantially,” and a wherein claim term beginning with “wherein either a) the N transistors are transistors of a first transistor type and the P transistors are transistors of a second transistor type, such that the first, second, third, and fourth N transistors are first, second, third and fourth transistors of the first transistor type . . .” (the “Wherein Clause”).
Regarding the terms “about” and “substantially,” Tela argued that the use of the terms in the asserted patents does not render the claims insolubly ambiguous as the Federal Circuit has confirmed that relative terms do not render patent claims so unclear that a person of ordinary skill in the art could not ascertain the scope of the claims. With respect to the Wherein Clause, Tela argued that the term does not represent a “tautology,” as argued by Respondents and instead, in view of the surrounding claim language and specification, “transistor type” refers to both n- or p- transistors and allows for either to be selected as the first type with the other being defined as the second type.
With respect to the limitation “about” and the limitation “substantially equal,” Respondents argued that the term of degree for the limitations was not defined in the intrinsic record and that a person of ordinary skill would be unable to determine the amount of deviation that would be considered “immaterial” to meet the claims. Regarding the term “substantially co-aligned,” Respondents argued that a person of ordinary skill would not have understood the metes and bounds of the claims to the extent the term was defined to mean something other than “aligned such that the common line of extent passes through each gate electrode.” Additionally, Respondents argued that the term “substantially linear” is indefinite if not defined to incorporate the definitions of the separate terms “substantially” and “linear” contained in the provisional application for the ‘049 patent. With respect to the Wherein Clause, Respondents argued that the term does not present alternative claiming and that the intrinsic evidence does not contain guidance on how to construe the clause or the term “transistor type.”
In the Order, ALJ Gildea found that, with respect to the terms “about” and “substantially,” Tela had misapplied Federal Circuit precedent and that while the Federal Circuit has held that using words of degree does not automatically render a claim indefinite and invalid, the Federal Circuit has not said that the use of these terms is never indefinite. ALJ Gildea further noted that Tela provided no support for its position that summary determination of definiteness was appropriate with respect to these terms of degree. Regarding the Wherein Clause, ALJ Gildea found that Tela’s arguments and evidence were insufficient to support granting summary determination as Tela did not identify the claim language and portions of the specification that supported its position. ALJ Gildea further noted that Tela was requesting a premature claim construction ruling and that an evidentiary hearing and further briefing on the issues would be beneficial. Accordingly, ALJ Gildea denied the motion for summary determination.