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IP Alert: Federal Circuit Finds Claim Language Added in IPR Patentable Over Indefiniteness Challenge

June 8, 2022

On June 1, in ClearOne, Inc. v. Shure Acquisition Holdings, Inc., the Federal Circuit applied preexisting legal standards to find that new claim language added in an inter partes review (IPR) proceeding was not indefinite. The court found that intrinsic and extrinsic evidence provided skilled artisans reasonable certainty about the meaning of the new claim language.

Shure’s patent related to a particular configuration of a microphone array for use in drop ceilings. In particular, the new claim language interpreted by the court covered a “self-similar” configuration for the microphone array that Shure first added during an IPR proceeding initiated by ClearOne.

At the USPTO’s Patent Trial and Appeal Board (PTAB), ClearOne argued that the “self-similar” language rendered the added claims indefinite. The PTAB disagreed and ClearOne appealed. On appeal, ClearOne again argued that the added “self-similar” language was indefinite because the specification was susceptible to multiple different interpretations. However, the court ultimately upheld the PTAB ruling finding the added claim terms not indefinite.

The court applied the test for indefiniteness from Nautilus, Inc. v. Biosig Instruments, Inc., which requires claim language to inform the skilled artisan “about the scope of the invention with reasonable certainty.” The court found the required certainty from various intrinsic and extrinsic evidence including the context and nature of the examples from Shure’s specification, relevant dictionary definitions, and ClearOne’s own expert’s testimony.   

First, the court expressly found that specific examples of fractal configurations “such as concentric rings, ovals, or other shapes” in Shure’s patent specification were complimentary descriptions of “self-similar” configurations and not ambiguous contrary descriptions as ClearOne argued. The court specifically found that the language “self-similar or fractal-like” and “self-similar or repeating” as used in the specification were not juxtapositions and instead had the effect of equating “self-similar” to the described fractal like and repeating patterns.

Second, while the court found that the intrinsic specification examples alone were sufficient to render the claim language definite, the court also relied on extrinsic dictionary definitions and the testimony of ClearOne’s expert to bolster its case. Notably, the court found the mere fact that ClearOne’s expert was able to nominally identify the prior art references as including a self-similar microphone configuration supported the conclusion that the language provided reasonably certainty to the skilled artisan.

Finally, the court reiterated existing precedent that the mere existence of different possible interpretations for claim language was not sufficient on its own to show indefiniteness. The court noted that such a holding “would render nearly every claim term indefinite.”

This case is significant because it provides a further example of the type and nature of both intrinsic and extrinsic evidence sufficient to demonstrate that a skilled artisan would understand claim language with reasonable certainty. The case also demonstrates a possible conflict between successfully arguing that a claim is both indefinite and also taught by various prior art references.

For more information on this ruling, please contact Fitch Even attorney Michael R. Anderson, author of this alert. 

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