The Eastern District of Texas recently invalidated several patent claims that the court had found indefinite in a separate claim construction ruling in the case Uniloc 2017 v. Samsung. Interestingly, the court found the claim term “partition of important subject matter” indefinite in some claims and not others, despite stating that the claim term had the same meaning in all the claims.
Uniloc 2017 is a patent assertion entity that sued several companies for patent infringement in the Eastern District of Texas, in this case electronics- and appliance-maker Samsung. Uniloc’s asserted patent is U.S. Patent No. 7,190,408, related to decoding television signals.
The claim term “partition of important subject matter” appears in, among others, claims 1 and 8:
1. A receiver comprising:
a decoder for receiving and decoding a signal representing an image and control data wherein the control data defines a vector indicating a location of a partition of important subject matter within said image:
the control data further defining the size of said partition showing said important subject matter; and
a re-sampling unit for extracting a re-sampled image to be displayed on the screen of a display device from said decoded image by re-sampling said decoded image at a variable re-sampling rate defined at the receiving end such that the size of the partition of important subject matter in the re-sampled image is adapted according to a criterion.
a broadcaster for broadcasting a TV-signal, representing an image and control data, to at least one image display apparatus wherein the control data defines a vector indicating a location of a partition of important subject matter within said image; and
said image display apparatus comprising:
8. a TV-receiver including a decoder for receiving and decoding said TV-signal, and
a display device being connected to said TV-receiver and having a screen;
the control data further defines the size of said partition; and
the TV-receiver further includes a re-sampling unit for extracting a re-sampled image to be displayed on the screen from said decoded image by re-sampling said decoded image at a variable re-sampling rate defined at the receiving end such that the size of the partition of important subject matter in the re-sampled image is adapted to the fixed size of the screen of the display device according to an individual criterion.
For all the claims, Samsung’s basic argument is that what counts as “important” is subjective, based on a decision by a human operator. For claim 1, that argument failed because the claim only describes what happens at the receiving end, not at the sending end where the decision about importance is made. Claim 1 is not “directed to creating a partition of important subject matter, but instead recite[s] receiving the partition of important subject matter. That is, the ‘partition of important subject matter’ is a label.” A person of ordinary skill in the art would understand the “partition of important subject matter” to be whatever is indicated in the data received by the decoder.
Claim 8 came to the opposite outcome because that claim recited the sending end as well. “[I]n contrast to Claims 1 and 9, the ‘partition of important subject matter’ is subjective, because it requires a broadcaster to act on the ‘importance’ of the partition.” The specification fails to provide any objective guidance for determining importance.
The court found one other claim term indefinite: “partition of important subject matter is located in a remaining image at a similar position as in the received image.” What counts as “similar” is “a term of degree” for which “the specification fails to provide some standard for measuring that degree.” Uniloc pointed to the partition being “generally in the same spot on the screen relative to the size of the screen” as shown in the figures. But the relative position was, in Uniloc’s argument, only measured from the right side of the screen. The partition was in radically different positions when measured relative to the left side of the screen, and Uniloc did not provide a reason for using the right side rather than the left side.
The claim construction order did not take any action with respect to claim validity, but on the same day the court issued a sua sponte order invalidating the claims containing indefinite terms. The court felt comfortable issuing an order without briefing from the parties because the Local Rules state that indefiniteness is part of claim construction, so the issue was fully briefed for the claim construction order.
Lessons for Practice
The obvious takeaway is to avoid subjective terms and terms of degree when drafting patent claims. Words like “important” and “similar” should raise red flags for any competent patent drafter, and they are often not necessary. Even in the claims for which “partition of important subject matter” was found definite, the word “important” could have been omitted without losing anything. Sometimes such claim terms are unavoidable, but in that case the description must fully explain how the claim terms are satisfied.