Indefiniteness After Nautilus – A Very “Delicate Balance”
In Interval Lighting v. AOL, Inc., Appeal no. 2013-1282, -1283, -1284, -1285 (Fed. Cir. Sept. 10, 2014), the appealed indefiniteness finding by the district court was affirmed by the Fed. Cir. panel. This was not surprising, since the disputed term was that some sort of extraneous information– like an advertisement – would be displayed on a computer screen during use in an “unobtrusive manner.” This term (one of “degree”) was termed “highly subjective” by the panel, that found that “its scope…depends ‘on the predictable vagaries of any one person’s opinion.’”
Interval Lighting’s last hope was to convince the panel that the term “unobtrusive manner” should be defined by reference to a “narrow example” from the specification, such as displaying the image in a limited area of the screen. However, the relied-upon embodiment was disclosed in the following way: “e.g., the information is presented in areas of a display screen that are not used by displayed information associated with the primary interaction with the apparatus.”
While noting by reference to a biotech decision, Enzo Biochem., that a claim phrase (like “substantially”) can sometimes be defined via the examples, the panel did not think that this was such a case; “In this case, however, we decline to cull out a single ‘e.g.’ phrase from a lengthy written description to serve as the exclusive definition of a facially subjective claim term…. Had the phrase been cast as a definition instead of as an example—if the phrase had been preceded by ‘i.e.’ instead of ‘e.g.—then it would help provide the clarity that the specification lacks.”
I could go on, but you get the take-away (even if the drafter intended to simply be exemplary). Never use that evil abbreviation ever again – anywhere.
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