A Single "e.g." Phrase, As Opposed To An "i.e." Phrase, Failed To Save Facially Subjective Claim Term From Indefiniteness

Interval Licensing LLC. v. AOL, et al., __ F.3d __ (Fed. Cir. Sept. 10, 2014) (Taranto, CHEN*) (Nos. 2013-1219, -1220, -1221, PTAB)

Federal Circuit affirms judgment of invalidity, vacates judgment of noninfringement and remands for further proceedings. The patents in suit were directed to an "attention manager for occupying the peripheral attention of a person in the vicinity of a display device."

Indefiniteness: In determining that the claim phrase "unobtrusive manner that does not distract a user" was indefinite, the Federal Circuit concluded that: 1) the relationship between the phrase and the patents' embodiments was too uncertain, such that it was unclear whether the term only had a spatial meaning (as suggested by the wallpaper embodiment) or a temporal meaning as well (as suggested by the screensaver embodiment); 2) statements in the prosecution history further highlighted the difficulty in identifying the relationship between the "unobtrusive manner" phrase and the written description; and 3) contradictory findings during reexamination regarding whether the phrase was linked to one or both of the embodiments further highlighted the lack of clarity. While terms of degree are not inherently indefinite, it is insufficient to identify "some standard" for determining scope or "some meaning" to the claim: "The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art." Slip op. at 11-12. Rejecting Interval's alternative argument, the Fed Cir also concluded that a single example (i.e., "a single e.g. phrase") amidst a lengthy written description did not save the "facially subjective claim term"; whereas an "i.e." phrase may have.

Claim Construction: In construing the term "attention manager" as "a system that displays images to a user either when the user is not engaged in a primary interaction or in an area of the display screen that is not used by the user's primary activity," the Fed Cir adopted a broader construction than the district court did based on the patents' description of the wallpaper embodiment and its description of the "unused capacity." As for the non-dispositive claim term "instructions," the Federal Circuit decided to construe it because it may become dispositive on remand and construed the term as "a statement that specifies a function to be performed by a system," based on the specification and extrinsic evidence.

* Randall R. Rader, who retired from the position of Circuit Judge on June 30, 2014, did not participate in this decision.