Federal Circuit Says Narrowing Limitation Does Not Create a Contradiction Leading to Indefiniteness

The U.S. Courtroom of Appeals for the Federal Circuit (CAFC) issued a precedential decision at the moment reversing the Western District of Texas district court docket’s indefiniteness evaluation and explaining that it improperly discovered a contradiction between two declare limitations to reach at its indefiniteness holding.

Amperex Know-how Restricted filed an motion in search of declaratory judgment of noninfringement and challenged the validity of sure claims of Maxell, Ltd.’s U.S. Patent No. 9,077,035 for a chargeable lithium battery and Maxell asserted infringement of the patent in a separate motion. The 2 actions had been consolidated within the Western District of Texas and the court docket in the end held that two of the “whereby” clauses of the only real impartial declare 1 of the ‘035 patent contradicted each other. The mixed contradictory clauses learn: [c] “M1 represents not less than one transition steel ingredient chosen from Co, Ni and Mn, . . . [f] whereby the content material of Co within the transition steel M1 of the formulae (1) and (2) is from 30% by mole to 100% by mole.”

The district court docket concluded that “‘the plain language of the declare recites a contradiction,’ as a result of the primary limitation doesn’t require the presence of cobalt (nickel or manganese suffices), so cobalt is ‘non-compulsory,’ whereas the second limitation does require cobalt,” in keeping with the CAFC’s opinion.

On attraction, the CAFC mentioned that the district court docket’s rationale that “[f]or a component to concurrently be non-compulsory and required is a contradiction on its face” was incorrect as a result of there isn’t any contradiction on this specific case. The CAFC reasoned that the primary limitation merely states one requirement of a transition steel below the declare—that it have to be cobalt, nickel or manganese—whereas the second limitation states one other requirement: whether it is cobalt, it have to be at a content material of 30% to 100% by mole. The CAFC additional defined:

“It makes no distinction, not less than right here, that the 2 necessities are positioned in separate limitations—somewhat than each showing in limitation [c]. Such placement doesn’t alter the logical level that it’s attainable to satisfy each necessities, that means that there isn’t any contradiction….

…That there have been different methods of drafting the declare doesn’t render the declare language contradictory or indefinite.”

Moreover, it’s the atypical position of dependent claims so as to add narrowing limitations to the impartial claims they consult with, mentioned the CAFC, and the district court docket’s suggestion {that a} limitation that narrows an earlier limitation “creates an invalidating contraction” would upend the atypical apply for dependent claims. “[B]y statute, ‘[a] declare in dependent kind shall be construed to include by reference all the constraints of the declare to which it refers,’” wrote the court docket, citing 35 U.S.C. § 112.

The truth that limitation f is contained in impartial declare 1 somewhat than in a dependent declare doesn’t make the 2 limitations contradictory, mentioned the CAFC. “There isn’t any distinction materials to the indefiniteness inquiry between a narrowing limitation recited in a dependent declare and the scenario right here, the place the additional narrowing limitation is recited within the impartial declare itself,” the opinion mentioned.

Amperex tried to argue that the declare language defining the M2 time period, which requires that “M2 represents Mg and not less than one steel ingredient chosen from the group consisting of Ti, Zr, Ge, Nb, Al, and Sn,” results in uncertainty in regards to the scope of M1 however the CAFC mentioned this suggestion “under no circumstances establishes a contradiction” and “lacks advantage by itself phrases.” The opnion mentioned:

“The language defining M1 is obvious, and it’s not overridden by the specification or prosecution historical past. A related reader wouldn’t fairly be confused into abandoning that clear that means by the declare’s use of various language for outlining M2.”

The CAFC thus reversed and remanded the district court docket’s determination for additional proceedings in line with the opinion.

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