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of Nature simulation system. Inc. vs. Autodesk, Inc., 2022 US App. LEXIS 28654, 50 F.4th 1358 (Fed. Cir. 2022), Nature Simulation Systems Inc. (“NSS”) Granted Relief to Court of Appeals for the Federal Circuit When Majority Panel Overturns Decision in Northern District of California. I was. Auxiliary manipulation of three-dimensional objects was invalid as an indefinite period. A Federal Circuit majority, consisting of Justices Newman and Lourie, held that the district court inappropriately ignored the specification language. Further, the majority argued that the disputed claims were clear in light of the ignored specification language.
US Pat. Nos. 10,109,105 and 10,120,961 relate to computer-implemented methods for constructing three-dimensional objects using computational methods called “Boolean operations.” These patents relate to the data structures and algorithms of the claimed methods, described as modifications of known Boolean operations (“Watson’s method”) for analyzing and representing three-dimensional geographic features. identification. *3. The patent states that the claimed method offers simplicity and flexibility compared to previous programs and is easier to program and implement. identification.*4.
district court
In an infringement action filed by NSS, Autodesk asserted that the asserted patent was indefinitely invalid under 35 USC § 112(b). The district court found the following two claim phrases in the asserted patent to be indefinite. According to the district court, there were “unanswered questions” raised by Autodesk’s experts in defining these terms, which were not answered in the claim language itself. identification. at 7 o’clock.
The district court’s indefiniteness standard required that all questions be answered on the language of the claims alone, without regard to the language of the specification or prosecution history.
identification.*11.
federal circuit
A majority of the Federal Circuit overturned the district court’s decision, finding that the district court applied the erroneous standard of “unanswered questions.” identificationat *17. A majority of the comments were explained as follows:[c]”Single and use impudent language” is not the standard of good law.
identification. at *12. Rather, the test
Nautilus, Inc. vs. Biosig Instruments, Inc.572 US 898, 910 (2014):
We request that a reading of § 112, ¶ 2, and the claims of a patent, viewed in light of the specification and prosecution history, inform one of ordinary skill in the art as to the scope of the invention with reasonable certainty.
nature simulationat 9 o’clock.
Applying the correct criteria, the majority argued that the challenged claims were not invalid as indefinite because the specification provided information that answered the questions posed by Autodesk’s experts. Regarding the term “last intersection”, (1) the language of the specification describing how the intersection line was constructed and where it was located dominated. (2) A flowchart for explaining intersection lines. (3) A specification language describing how the invention is used and modified compared to the known Watson method. identification* at 12–13. Regarding the “modified Watson method”, the majority focused on the drawings and text of the specification describing the prior art method.
identificationat *15–16.
The majority also cited prosecutorial histories to support the allegations are not ambiguous. identificationat *17. The examiner initially dismissed the claim to uncertainty because the examiner asked, “What is causing the closure of the crossing line?” The relationship with adjacent triangles was unknown. identification.*18. To overcome this rejection, NSS amended its claims to specify the relationship between intersecting line closures and adjacent triangles. identificationA majority noted that examiners withdrew their rejections in the light of amendments and that their amended claims distinguished the invention from the prior art. identificationat *19. It is inappropriate for the district court to ignore the prosecution history in its uncertainty analysis. identificationat *21.
A majority reversed the district court’s decision and remanded it for further proceedings.
opposite opinion
Dissenting, Justice Dyk agreed with the majority’s ambiguity standard. However, he disagreed as to whether the specification provided enough information to answer the questions raised by the Autodesk expert. identificationat *25. Judge Dyk argued that the specification did not define the Watson Law as modified or explain the lines of intersection.
identificationat *28. Further, Judge Dyk disagreed with the majority that the district court ignored the specification and prosecution history. identificationat *29. He pointed out that nowhere in the district court’s decision did it state that “words of claim, alone” were the standard of indefiniteness. identification.*22. He said the majority improperly quoted the language from Autodesk’s declaration. identification.
Takeaway
This case illustrates that when trying to overcome 35 USC § 112(b) invalidity, whether in court or in the USPTO, the standard is one of “reasonable certainty” to those skilled in the art that the claim may be accomplished by the specification and prosecution history as well as the language of the
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