Is Inconsistency Indefiniteness under 35 U.S.C. § 112? TVnGo Ltd. V. LG Electronics, Inc.

Claims of five patents directed to toggling between television and Internet content have been held invalid under 35 U.S.C. § 112(b) based on indefiniteness of claim terms directed to content “overlays” on a display screen. TVnGo Ltd. V. LG Electronics, Inc., Civil No. 18-10238 (RMB/KMW) (D. N.J. April 16, 2020). The patents-in-suit are U.S. Patent Nos. 8,132,220; 9,124,945; 9,392,339; 9,407,969; and 9,794,621; the indefinite claim terms, identified during a claim construction proceeding, are “overlay activation criterion” and “overlay activation signal.”

The court found these claim terms, indisputably not “terms of art, nor defined by the Specifications,” indefinite under Nautilus, Inc. v. Biosign Instruments, Inc. (U.S. S. Ct. 2014) because they “create irreconcilable inconsistencies into the Patents-in-Suit” in two ways. First, the terms have “intra-patent inconsistencies,” i.e., within respective patents. Second, the terms have “inter-patent inconsistencies,” i.e., across all of the patents.

The court identified three intra-patent inconsistencies:

  • First, claims of each of the ’220 and ’969 patents explicitly recited “overlay activation criterion” as being provided “over the Internet,” where other claims and the Specifications “state that ‘user command information’ may be a component of ‘overlay activation criterion’ and that such information is provided at the user’s premises and not over the Internet.” (Emphasis in original.)
  • “Second, the claims of the ‘945 and ‘621 Patents are internally inconsistent with their own specifications” because “[t]he claims in which “overlay activation signal” appear refer to a signal that causes overlays stored in memory to be displayed,” whereas “activate” in the specifications “refer[s] only to the pressing of a remote control key corresponding to a displayed overlay thereby ‘activating’ the overlay to display the [Internet] content to which the overlay corresponds.” Citing Media Rights Technologies, Inc. v. Capital One Financial Corp. (Fed. Cir. 2015), the court concluded that it was fatally unclear what result the overlay activation signal would have: displaying a stored overlay or Internet content.
  • Third, “[c]laim 1 of the ‘339 Patent states that an overlay activation criterion causes the display of overlays9, whereas the ‘339 Patent’s specification, like the specifications of the ‘945 and ‘621 Patents, indicates that activating an overlay results in the display of IP content.”

Inter-patent inconsistencies arose because “‘overlay activation criterion’ and ‘overlay activation signal’ are used interchangeably between the ‘339 Patent and the ‘621 Patent to achieve the same result: display of an overlay.” But the specifications defined “criterion” and “signal” differently, the criterion being provided by the Internet, and the signal by a user’s remote control. But these two things were used to achieve the same result, leaving the scope of the invention unclear. There was similar confusion in the ’220 patent, where, “when the overlay activation criterion is met, the result is the generation of an overlay.” (Emphasis in original.)

The patent owner countered what it characterized as the defendant’s argument “that claim terms must have the same meaning across all patents.” (Emphasis in original.) But the court agreed with the defendant that “the reason the claim terms are indefinite is not simply because the terms are used differently,” but is “that the different uses cannot be reconciled” to inform a skilled reader “to a reasonable degree of certainty, of the meaning of claim terms.”

The court also rejected the testimony of the patent owner’s expert because it had no support in the intrinsic record. Nor did the patent file histories provide any further guidance. And it was not persuasive that patent examiners had not found the claims indefinite. The court declined to rely on Sonix Technology Co., LTD. v. Publications International, LTD (Fed. Cir. 2017), which reversed an indefiniteness holding based on guidance in the intrinsic record, noting that “Sonix expressly states that ‘application [of the disputed claim terms] by the examiner and an expert do not, on their own, establish’ definiteness.”

Two editorial comments. First, this case demonstrates that, in patent drafting, consistency is far more than merely the hobgoblin of little minds. (Sorry, couldn’t resist – and it’s true.) Second, it will be interesting to see what the Federal Circuit will do if and when it conducts its de novo review of the present holding.