11/05/14

Interval Licensing LLC v. AOL, Inc.: Nautilus Applied: Terms of Degree and the Unpredictable Vagaries of Opinion


Category: Claim Construction  
 
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleInterval Licensing LLC v. AOL, Inc., No. 2013-1282, -1283, -1284, -1285 (Fed. Cir. Sept. 10, 2013).
Issues
[1] “Because the district court failed to appreciate that the language describing display ‘in an unobtrusive manner that does not distract a user’ is tied to specific type of display described in the specification [of invalidated claims 4–8, 11, 34, and 35 of U.S. Patent 6,034,652 (“the ’652 patent”)],” Interval argues, the district court “improperly divorced its analysis from the context of the written description and incorrectly focused on irrelevant hypotheticals . . . .”
Interval at *13-14 (text added, internal citation removed).
[2a] What is in dispute, and what we must consider in reviewing the construction of “attention manager,” [as recited in claims 15–18 of the ’652 patent] is whether the district court read the embodiments too narrowly and thus improperly limited the scope of the claim term.
Id. at *20 (text added).
[2b] Interval asks us to clarify that “instructions,” in the context of [claims 15–18 of the ’652 patent], “may encompass ‘data’” and “need not be written ‘in a programming language.’”
Id. at *22-23 (text added, internal citation removed).
Holdings
[1] [A] term of degree [such as "unobtrusive manner"] fails to provide sufficient notice of its scope if it depends “on the unpredictable vagaries of any one person’s opinion.” Interval at *13 (text added, internal citation removed). 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. [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.”
Id. at *18 (text added).
[2a] [T]he patents’ [lexicographical] description [...] supports a broader reading [than the traditional term]. [...] [However, not all of] Interval’s proposed modification [...] is not taken directly from the cited “lexicography.”
Id. at *21-22 (text added).
[2b] “[I]f ‘data’ is a type of ‘instructions,’ then the phrase ‘instructions and/or data’ would not make sense.” Id. at *23. [...] [W]e have cautioned against relying on dictionary definitions at the expense of a fair reading of the claims, which must be understood in light of the specification. [...] [T]he [dictionary definition] on which the district court relied suggests a broader construction of “instructions” than the court adopted.
Id. at *25 (text added).
 
 
 
Procedural HistoryInterval sued [the “Defendants”] in the Western District of Washington, alleging infringement of four patents, including the ’652 [patent]. Interval’s suit alleged that the Defendants infringe the patents through products and software that use “pop-up” notifications to present information to users. Id. at *5. [Interval] appeals from [...] final judgment orders [granting]: (1) final judgment of invalidity of claims 4–8, 11, 34, and 35 of [the ’652 patent] based on [definiteness]; and (2) final judgment of non-infringement of claims 15–18 of the ’652 patent, based on the court’s claim construction of the phrase “during operation of an attention manager.”
Interval at *3 (text added, footnote removed). 
 
 
Legal Reasoning (Taranto and CHEN)
[1] Indefiniteness of "Unobtrusive Manner"
Legal StandardA claim fails to satisfy [35 U.S.C. § 112, ¶ 2 (2006)] 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.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). [...] The definiteness standard “must allow for a modicum of uncertainty” to provide incentives for innovation, but must also require “clear notice of what is claimed, thereby appris[ing] the public of what is still open to them.”
Interval at *10-11 (text added, footnote removed).
Representative Claim LanguageClaim 1 of the ’314 patent is representative: [...] 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 [...]
Id. at *6 (text added).
Terms of Degree are Definite Where Enough Certainty is ProvidedWe do not understand the Supreme Court to have implied in Nautilus, and we do not hold today, that terms of degree are inherently indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention. [...] Although absolute or mathematical precision is not required, it is not enough, as some of the language in our prior cases may have suggested, to identify “some standard for measuring the scope of the phrase.” [...] The Supreme Court explained that a patent does not satisfy the definiteness requirement of § 112 merely because “a court can ascribe some meaning to a patent’s claims.”
Id. at *11-12 (internal citations removed).
Look to the Written Description When A Claim Phrase is Purely Subjective[The] “unobtrusive manner” phrase is highly subjective and, on its face, provides little guidance to one of skill in the art. Although the patented invention is a system that displays content, the claim language offers no objective indication of the manner in which content images are to be displayed to the user. [...] “[W]hether something distracts a user from his primary interaction depends on the preferences of the particular user and the circumstances under which any single user interacts with the display.” [...] As we have explained, 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.” [...] [W]e must look to the written description for guidance.
Id. at *13 (text added, internal citations removed).
It is not Reasonably Clear that “Unobtrusive Manner” Is Tied to a Specific EmbodimentThe phrase, Interval maintains, is tied exclusively to the wallpaper embodiment, thus informing those of skill in the art that “unobtrusive” has only a spatial meaning. [...] [O]ther portions of the specification suggest that the phrase may also be tied to the screen saver embodiment. [...] 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. [...]
Id. at *14-15 (text added, internal citations removed).
The Prosecution History Further Illustrates IndefinitenessThe prosecution history further illustrates the difficulty in pinning down the relationship between the written description and the “in an unobtrusive manner that does not distract the user” claim phrase. The statements of Interval, and the responses of the USPTO, reflect considerable uncertainty about which embodiments were tied to the “unobtrusive manner” language. [...] [Although] examiners [found] that the specification links the “unobtrusive manner” language to the wallpaper embodiment, excluding the screensaver embodiment[,] the Board concluded that, in light of “the ambiguous nature” of the specification, “the claim term 'unobtrusive manner’ includes the screensaver embodiment.”
Id. at *15-16 (text added, internal citations removed, footnotes removed).
Preceding by “i.e.” Instead of “e.g.” Would Help Provide ClarityIn the alternative, Interval suggests that if we are not persuaded that the wallpaper embodiment defines the “unobtrusive manner” phrase, then we must at least adopt a “narrow example” from the specification. [...] “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).” [...] We recognize that a patent which defines a claim phrase through examples may satisfy the definiteness requirement. [...] 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. [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.” [...] With this lone example, a skilled artisan is still left to wonder what other forms of display are unobtrusive and non-distracting. [...] The specification offers no indication, thus leaving the skilled artisan to consult the “unpredictable vagaries of any one person’s opinion.” [...] Such ambiguity falls within “the innovation-discouraging ‘zone of uncertainty’ against which [the Supreme Court] has warned.”
Id. at *17-18 (text added, internal citation removed).
[2a] Claim Construction of "Attention Manager"
Legal StandardWe review claim construction de novo. [...] The words of a claim “are generally given their ordinary and customary meaning,” which is the “meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.” [...] Claim language must be viewed in light of the specification, which is “the single best guide to the meaning of a disputed term.” [...] In addition to consulting the specification, we may also consider the prosecution history and any relevant extrinsic evidence.
Interval at *19 (text added, internal citations removed).
Representative Claim Language Representative claim 15 recites: A computer readable medium encoded with one or more computer programs for enabling acquisition of a set of content data and display of an image or images generated from the set of content data on a display device during operation of an attention manager, comprising: [...]
Id. at *7 (text added).
District Court Claim Construction of "Attention Manager""a system that displays images to a user either when the program detects that the user is not engaged in a primary interaction or as a background of the computer screen[.]"
Id. at 20 (text added, internal citation removed).
Interval's Proposed Claim Construction of "Attention Manager""a system that displays images to a user either when the user is not engaged in a primary interaction or as an area of the display screen that is not substantially used by the user’s primary activity."
Id. at 20 (text added, internal citation removed).
Written Description Distinguishes Between “Detection” and “User-activation”Interval notes that the specification describes two ways of activating the screen saver: (1) through the detection of an idle period or, alternatively, (2) through direct user activation. [...] [W]e think that Interval’s reading better conforms to the distinction drawn between “detection” and “user-activation” in the written description. We therefore agree with Interval that the phrase “the program detects that” should be removed from the [district court's claim] construction.
Id. at *20 (text added, internal citation removed).
The Wallpaper Embodiment Should Not Be Strictly Limited to the “Background” of a Computer ScreenWith regard to the second proposed modification—the replacement of “a background of the computer screen” with “as an area of the display screen that is not substantially used by the user’s primary activity”—Interval argues that its change is faithful to a “lexicographical definition” in the specification. Interval urges, the construction should be based on an express definition of “wallpaper embodiment[.]” We agree with Interval that the wallpaper embodiment of the attention manager should not be strictly limited to the “background” of a computer screen, and we agree that the specification’s description of the embodiment should inform our construction. [...] The patent describes the embodiment as making use of unused spatial capacity—that is, space in the display not used by the user’s primary interaction. [...] The specification does not indicate that the images must be displayed as part of the background of the display device.
Id. at *20-21 (text added, internal citations removed).
Interval’s Proposed Modification Is Not Taken Directly from the Cited LexicographyInterval’s proposed modification (“an area of the display screen that is not substantially used by the user’s primary activity”) is not taken directly from the cited “lexicography.” Rather, the proposed language appears to be Interval’s interpretation of where the images will be displayed while the user is engaged in a primary interaction. Based on our reading of the specification, the attention manager is better construed as displaying images in areas “not used”— instead of “not substantially used”—by the user’s primary activity.
Id. at *22 (text added).
We Agree with Interval’s Proposed Construction of “Attention Manager”In sum, with the exception of the addition of the word “substantially,” we agree with Interval’s proposed construction of “attention manager.” Accordingly, we adopt the following construction: “a system that displays images to a user either when the user is not engaged in a primary interaction or in an area of the display screen that is not used by the user’s primary activity.”
Id.
[2b] Construction of "Instructions"
Review in the Interest of Judicial EconomyIn the interest of judicial economy, we have the discretion to review a non-dispositive claim construction if we believe that the construction may become important on remand. [...] Because we are vacating the judgment of noninfringement as to claims 15–18 of the ’652 patent, and because those claims include the term “instructions,” we take this opportunity to address the claim construction of that term.
Interval at *23 (text added, internal citation removed).
The Specification Maintains a Distinction Between “Instructions” and “Data.”The district court construed “instructions” as “a statement in a programming language that specifies a function to be performed by a system.” [...] Interval notes that the specification refers to certain “instructions” as “functional components,” [...] which may be represented by “data.” [...] [W]e read the specification as maintaining a distinction between “instructions” and “data.” An instruction “may . . . include data,” not consist of data. [...] [T]he district court’s reading is consistent with extrinsic evidence suggesting that the distinction between “instructions” and “data” is widely recognized in the field of art [as cited in the Oxford Dictionary of Computing].
Id. at *23-24 (text added, internal citations removed).
The Extrinsic Source on which the District Court Relied Suggests a Broader Construction of “Instructions”As for Interval’s concerns regarding the “in a programming language” phrase, we find that a modification to the construction is necessary. Although the district court carefully explained why the intrinsic evidence supported the exclusion of the word “data” from its construction, the court offered no direct explanation for its inclusion of the “in a programming language” limitation. The patents’ specification does not indicate that instructions must take the form of programming language statements. [...] The IEEE Dictionary includes five different definitions of “computer instruction,” with two definitions specifically directed towards “software” computer instructions. The Defendants based their construction on one of those two definitions[.] [...] [W]e have cautioned against relying on dictionary definitions at the expense of a fair reading of the claims, which must be understood in light of the specification. [...] In sum, the extrinsic source on which the district court relied suggests a broader construction of “instructions” than the court adopted. We conclude that a construction without the “in a programming language” phrase is both simpler and more accurate. Accordingly, we adopt the following construction: “a statement that specifies a function to be performed by a system.”
Id. at *23-25 (text added, internal citations removed).
Conclusion
While we agree with the court’s indefiniteness determination, we do not agree with the court’s construction of “attention manager” and thus modify that construction. Additionally, we modify the court’s construction of the term “instructions.” For the reasons set forth below, we affirm the judgments of invalidity, vacate the judgments of noninfringement, and remand for further proceedings.
Interval at *3.
 
 
 
 
 
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