Lack of Antecedent Basis Renders Claim Indefinite, but Subjective Claim Terms Found Not Indefinite Under § 112

During a Markman hearing, the Eastern District of Texas ruled claim 12 of U.S. Patent No. 7,865,920 invalid for indefiniteness under 35 U.S.C. § 112 because “[t]here is no antecedent reference to ‘storage locations’ or ‘identified storage locations’ supporting ‘said identified storage locations’ in the wherein clause. Personalized Media Communications, LLC v. Google LLC, et. al, No. 19-CV-00090-JRG (E.D. Tex. Apr. 3, 2020). Further, the court ruled that multiple claims of U.S. Patent No. 7,747,217 were not invalid for indefiniteness under 35 U.S.C. § 112 because the meaning of the “explaining significance” terms is reasonably certain. Id.

Claim 12 of the ‘920 patent is reproduced here (emphasis added):

     An intermediate transmission station, comprising:

     a first receiver that receives from one or more remote programming origination stations a plurality of units of audio or video programming and data that identify said units of audio or video programming or a subject matter included in said units of audio or video programming;

     a first storage device that stores data of predetermined capacities;

     a first switch operatively connected to said first receiver that communicates said units of audio or video programming;

     a plurality of second storage devices operatively connected to at least one of said first receiver and said first switch for storing said units of audio or video programming;

     a transmitter operatively connected to at least one of said first switch and said plurality of second storage devices to transmit said plurality of units of audio or video programming to a subscriber station at a timing determined by processing said data that identify said units of audio or video programming or a subject matter included in said units of audio or video programming; and

     a first controller that processes said data of one or more predetermined capacities to identify one of said plurality of second storage devices at which to store at least one of said units of audio or video programming, that controls said first switch to store said at least one of said units of audio or video programming at said identified one of said plurality of second storage devices in accordance with processing said data of one or more predetermined capacities, that processes said data that identify said units of audio or video programming or a subject matter included in said units of audio or video programming, that controls said first switch to transfer said stored at least one of said units of audio or video programming from said identified one of said plurality of second storage devices to another of said plurality of storage devices, and that controls said first switch to communicate said units of audio or video programming to said transmitter,

     wherein said identified storage locations are different for each of said units of audio or video programming.

Personalized Media Communications argued that “said identified storage locations” shows “‘that the units of programming are stored in different locations that have already been identified.’” Google countered that “[i]t is not clear whether the ‘location’ refers to the location on a storage unit, the location of the storage unit on a device, or a location like a room.”

The court, operating under the indefiniteness standard of Nautilus, Inc. v. Biosign Instruments, Inc. (S. Ct. 2014), agreed with Google and found ‘[i]t is not clear whether ‘said identified storage locations’ are: (1) locations within ‘said identified one of said plurality of second storage devices,’ (2) locations within any one of ‘said plurality of storage devices’, or (3) any of ‘said plurality of storage devices.’” Therefore, the court held that the meaning of the wherein clause was not reasonably certain and claim 12 was indefinite under § 112.

Regarding the “explaining significance” terms of the ‘217 patent, Personalized Media Communications argued that the ‘217 patent “provide[s] sufficient context to provide reasonably certain scope to these terms and do[es] not limit the terms to require an explanation to the specific user, but instead allow[s]…that the explanation may be ‘generally applicable.’” Google countered that “[i]f the terms mean anything in particular, it is that the meaning or import is relative to each user and thus the terms should be construed to reflect that the significance is to the specific user.”

The court agreed with Personalized Media Communications and found that the “Defendants have failed to establish that any claim is indefinite for including any of the Explaining Significance terms.” Therefore, the court held that the “explaining significance” terms are not indefinite and “have their plain and ordinary meaning without the need for further construction.”

Lessons for Practice

This case provides two important takeaways:

First, when drafting multiple claim sets in a patent application, it is possible to overlook establishing proper antecedent basis in one claim set for a term that is used in another claim set. However, as this case illustrates, antecedent basis for a term in one claim set will not save the term from being found indefinite in another claim set that lacks proper antecedent basis. It is important to check that antecedent basis is established for terms in each claim set to avoid a finding of indefiniteness.

Second, while it is ordinarily good practice to include as much objective definition as possible when drafting a patent application, this case illustrates that using subjective terms will not automatically render a claim indefinite, nor will functional language, as the Federal Circuit recently reaffirmed.  However, if using subjective claim terms, remember to include enough detail in the specification to provide reasonably certain scope to the subjective terms.