Sonix Tech. Co. v. Publications Int’l, Ltd.,
844 F.3d 1370 (Fed. Cir. Jan. 5, 2017)
Authored by Jacky Beda
Statement of Facts: Sonix Tech. Co. (“Sonix”) owns the U.S. Patent 7,328,845 (“the ’845 patent”), which is a system and method for using a “graphical indicator” to encode information on the surface of an object. While encoding information on the surface of an object is not new and the ’845 patent admits that information has been recorded on the surface of objects “dating back to ancient times,” see ’845 patent, col. 1 ll. 15-16, the ’845 patent is unique because it improves on the conventional methods of recording information on the surface of an object by rendering the graphical indicators “visually negligible.”
The ’845 patent describes the visually negligible standard as a unique pattern of micro-units arranged in a layout that can store information with graphical indicators negligible to the human eye. In addition, the ’845 patent also contains written descriptions of differentiability, brightness, and homogeneity requirements for the graphical indicators to be considered negligible to the human eye. First, the written description requires the indicator to be so small that it is impossible for the human eye to differentiate one graphical indicator from another. Second, the patent contains a requirement that the number of micro-units be reduced based on the size and pitch of the graphical micro unit, as well as its desired visual effect, so that it will “have little influence on the brightness of the surface of the object.” See ’845 patent, col. 4 l. 67–col. 5 l. 1. Finally, the written description requires the number of micro-units of each graphical indicator to be substantially equal to each other so that they become invisible to the human eye.
In 2010, Sonix alleged that GeneralPlus infringed the ’845 patent by using dot pattern technology in children’s books. SunPlus (the parent company of GeneralPlus) then requested a reexamination of the ’845 patent from the U.S. Patent and Trademark Office (“USPTO”). Ultimately, the USPTO confirmed the patentability of the ’845 patent.
Procedural History: In 2013, Sonix alleged that Publications International, Ltd., SD-X Interactive, Inc., Encyclopedia Brittannica, Inc., and Herff Jones, Inc. (collectively, “Appellees”) infringed the ’845 patent. The United States District Court for the Northern District of Illinois ruled in favor of the Appellees in determining that the ’845 patent was invalid because it was indefinite. The district court reasoned that the term “visually negligible” was purely subjective and determined that the term, along with the written description of the patent, did not provide a person of ordinary skill with a meaning that is reasonably certain or objective. As a result, the district court granted summary judgment in favor of the Appellees and against Sonix, holding the asserted claims of the ‘845 patent invalid as indefinite. Sonix appealed to the Federal Circuit.
Question Presented: Whether the term “visually negligible” rendered the asserted claims under the ‘845 patent invalid as indefinite under 35 U.S.C. § 112.
Holding: The Federal Circuit held that the term “visually negligible” is not a purely subjective term and that the record, along with the written description and prosecution history, provided sufficient support to inform with reasonable certainty those skilled in the art of the scope of the ’845 patent. As a result, the Federal Circuit reversed the district court’s holding that the ’845 patent was invalid as indefinite.
Reasoning: The first issue was the standard of review to be applied in the case. The Federal Circuit concluded that it would review the district court’s determination that a claim is invalid as indefinite under a de novo standard. In concluding that the district court’s determination should be reviewed de novo, the Federal Circuit reasoned that a determination relating to the meaning of the intrinsic evidence and whether it conveys scope of the claims with reasonably certainty are legal conclusions. The district court therefore made legal conclusions that were not transformed into factual issues “simply by having an expert offer an opinion on them.” Teva Pharm. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 1342 (Fed. Cir. 2015) (“Teva II”). As a result, the Federal Circuit applied a de novo standard of review.
On the merits, the Federal Circuit determined that both intrinsic and extrinsic evidence supported its conclusion that there was an objective standard to determine the meaning of “visually negligible;” therefore, the ’845 patent was not indefinite. First, the Federal Circuit looked at 35 U.S.C. § 112, which requires that a patent inform those skilled in the art about the scope of the invention with reasonable certainty. See Nautilus v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). In analyzing Section 112, the Federal Circuit cited case law indicating that “a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.” Invitrogen Corp. v. Biocrest Mfg., L.P., 424 F.3d 1374, 1384 (Fed. Cir. 2005). Instead, as long as there is intrinsic evidence providing guidance as to the scope of the patent, the terms of degree are not indefinite. See Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1336 (Fed. Cir. 2010).
While the Federal Circuit in Datamize held that claims to an “aesthetically pleasing” look and feel for interface screens were indefinite because such language provided no guidance and was subjective, the question of whether something is “visually negligible” involves what the normal human eye can see and therefore contains an objective baseline. See Datamize,LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1348–49 (Fed. Cir. 2005). Similarly to Datamize, Interval Licensing involved a claim relating to displaying content “in an unobtrusive manner that does not distract a user.” Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014). Just as in Datamize, this too was considered a term of degree that was “purely subjective” since it offered “no objective indication of the manner in which content images are to be displayed to the user.” Id. at 1372. In both Datamize and Interval Licensing, a determination of whether something was “aesthetically pleasing” and “an unobtrusive manner that does not distract the user” was completely dependent on a person’s subjective opinion. On the other hand, while the term “visually negligible” may be a term of degree, it is not purely subjective because it involves what can be seen with a normal human eye, which provides an objective baseline through which to interpret claims. Therefore, “visually negligible” was not a purely subjective term.
In addition, the written description of the ’845 patent also demonstrates that the patent contained specific detail and included certain requirements and examples to guide the determination of whether a graphical indicator was “visually negligible.” The written descriptions here are similar to those in Enzo, where the Federal Circuit reasoned that the written description provided guidance and points of comparisons for skilled artisans. In Enzo, the written descriptions included examples of noninterfering structures and included procedures for selecting them. Similarly, the written description here included differentiability, brightness, and homogeneity requirements for the graphical indicators to possess in order to be considered visually negligible to the human eye. The descriptions were objective and support the conclusion that a skilled artisan would have been able to follow the guidelines to understand with reasonable certainty whether a graphical indicator was “visually negligible” or not. Conversely, in Datamize, the written description did not contain any examples of an “aesthetically pleasing” interface, nor did it provide factors that would guide a person in considering whether a feature was aesthetically pleasing. As a result, the ’845 patent contains considerably more detail than the Datamize patent, since the ’845 patent contains specific written descriptions to be considered, along with two specific examples of visually-negligible indicators.
Lastly, the prosecution history helps demonstrate that the term “visually negligible” was objective because expert witnesses were able to opine with sufficient certainty whether other patents were visually negligible. For example, during the first reexamination, SunPlus used the term “visually negligible” without any apparent uncertainty as to the meaning or scope of the term. In addition, Serjersen, one of Sonix’s expert witnesses, was able to understand the term as well as the written descriptions with sufficient certainty to (1) replicate the claimed indicator and (2) opine regarding whether it, and the indicators Lamoure and Priddy, were visually negligible. Thus, he was able to differentiate between which indicators were and were not “visually negligible.” Finally, the Appellees did not contend that the term “visually negligible” was indefinite for the first several years of litigation, even though they contended that twenty-eight other terms were indefinite.
As a result, the Federal Circuit held that the term “visually negligible” is not a purely subjective term and that the record, along with the written description and prosecution history, provided sufficient support to inform with reasonable certainty those skilled in the art of the scope of the ’845 patent. As a result, the Federal Circuit reversed the district court’s holding that the ’845 patent was invalid as indefinite.