A patent claim that recited displaying one set of information “near” another set of information was not indefinite, the Federal Circuit has held in Mentor Graphics Corp. v. EVE-USA, Inc., Nos. 2015-1470, 2015-1554, 2015-1556 (Fed. Cir. March 16, 2017) (opinion by Judge Moore, joined by Judges Lourie and Chen) (precedential). This case has something for everyone – among other things there is a long discussion of how to allocate lost profits damages, as well as a consideration of patent-eligibility under 35 U.S.C. § 101. This post, however, is limited to the issue of indefiniteness.
The district court had granted summary judgment that claim 1 of U.S. 6,132,109 was invalid for indefiniteness under 35 U.S.C. § 112. Specifically, applying the standard established by the U.S. Supreme Court in the 2014 case of Nautilus, Inc. v. Biosign Instruments, Inc., the district court found that one of “ordinary skill in the art” (which, incidentally, is language from 35 U.S.C. § 103, not Section 112) could not have ascertained with “reasonable certainty” the meaning of the word “near” in the following recitation:
displaying said characteristics associated with those said final circuit's nets and parts that correspond directly with said initial circuit's nets and parts near said portions of said synthesis source text file that created said corresponding initial circuit parts and nets.
The Federal Circuit disagreed, and reversed. The ’109 patent’s objective was to help a developer debug hardware description language (HDL). To achieve this goal, “the system must display the related HDL and analysis results ‘near’ enough to each other such that a developer would ‘relate’ the two.” The court thus held that “a skilled artisan would understand ‘near’ requires the HDL code and its corresponding circuit analysis to be displayed in a manner that physically associates the two.”
The Specification and associated figures supported this conclusion. The Specification explained “that the circuit analysis ‘can be displayed next to the appropriate line of the output.’” And a figure showed this; another figure that was alleged to be ambiguous showed unclaimed embodiments.
Lessons for Practice
As this blog has previously argued, the best defense against a finding of indefiniteness is to define claim terms. But many drafters, concerned about unduly limiting claim scope, refuse to do that. This case shows that, regardless, there is hope, even for so-called “relative” terms (like “near” and “proximate”) that many examiners love to reject out of hand. Even though it is unclear whether the Nautilus standard applies during examination at the PTO, we can nonetheless take the lesson that, If your specification describes the claimed invention in sufficient detail, you should have good arguments that one of skill in the art would have understood seemingly imprecise claim terms.
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