936 F.3d 1353
Fed. Cir.2019Background
- Aspen Aerogels owns U.S. Patent No. 7,078,359 directed to flexible aerogel composites reinforced with a “lofty fibrous batting” that provides bulk and some resilience while preserving thermal properties.
- Alison (Guangdong Alison Hi‑Tech) was accused at the ITC of importing infringing composite aerogel insulation products; the ITC found claims 1, 7, and 9 not invalid and infringed, and issued a limited exclusion order.
- The ALJ construed “lofty . . . batting” using the patent’s express definition: a fibrous material showing bulk and some resilience (with or without full bulk recovery), and cited specification tests/examples (e.g., compressible 50% and recovers to 70%). The Commission adopted the ALJ’s construction and declined further review.
- Alison challenged (1) indefiniteness of “lofty . . . batting” as a term of degree; and (2) validity (anticipation and obviousness) over prior art Ramamurthi, which discloses aerogel composites with fibers (including “glass wool”).
- The ALJ and Commission credited Aspen’s expert testimony distinguishing Ramamurthi’s disclosures from a “lofty batting”; PTAB denied Alison’s IPR institution on similar grounds. The Federal Circuit reviews indefiniteness de novo (fact findings for substantial evidence) and invalidity findings for substantial evidence under the clear‑and‑convincing evidentiary standard.
Issues
| Issue | Plaintiff's Argument (Alison) | Defendant's Argument (Aspen/Commission) | Held |
|---|---|---|---|
| Indefiniteness of “lofty . . . batting” | Term of degree lacking objective boundary; needs numerical precision (e.g., how much "resilience") | Spec provides express definition, metrics, examples, and tests giving objective boundaries to skilled artisans | Not indefinite — specification supplies reasonable certainty about bulk and some resilience |
| Anticipation by Ramamurthi | Ramamurthi examples (1‑B, 2) and "glass wool" inherently disclose bulk and resilience of a lofty batting | Experts show Ramamurthi’s properties refer to composites not necessarily the fibers; glass wool is a broad category not necessarily lofty | Not anticipated — substantial evidence supports that Ramamurthi does not necessarily disclose lofty batting |
| Obviousness over Ramamurthi (claim 9 dopant range) | Dopant range is inherent or would be obvious from Ramamurthi | Claim 1’s lofty‑batting limitation not shown in Ramamurthi; thus dependent claim 9 fails on antecedent ground | Court affirmed on anticipation ground and did not reach obviousness because anticipation defeat was sufficient |
| Role of specification examples (e.g., 70% recovery) | If example does not limit claim, it cannot be used to avoid indefiniteness; ALJ’s reliance is internally inconsistent | Examples may inform claim scope without being literal claim limits; specification can provide objective boundaries | No contradiction — examples can inform reasonable certainty without becoming claim‑limiting |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898 (2014) (patent claims must inform skilled artisan of scope with "reasonable certainty")
- Sonix Tech. Co. v. Publications Int'l, Ltd., 844 F.3d 1370 (Fed. Cir. 2017) (written‑description examples and procedures can provide points of comparison for terms of degree)
- Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010) (dependent claims, examples, criteria, test results can inform claim scope)
- One‑E‑Way, Inc. v. Int'l Trade Comm'n, 859 F.3d 1059 (Fed. Cir. 2017) (standard for reviewing indefiniteness and presumption of patent validity at ITC)
- Checkpoint Sys., Inc. v. U.S. Int'l Trade Comm'n, 54 F.3d 756 (Fed. Cir. 1995) (clear‑and‑convincing standard informs substantial‑evidence review of invalidity findings)
- Rosco, Inc. v. Mirror Lite Co., 304 F.3d 1373 (Fed. Cir. 2002) (inherency requires that missing characteristic be necessarily present in prior art)
- Trintec Indus., Inc. v. Top‑U.S.A. Corp., 295 F.3d 1292 (Fed. Cir. 2002) (inherency standard articulated)
- Vizio, Inc. v. Int'l Trade Comm'n, 605 F.3d 1330 (Fed. Cir. 2010) (anticipation is a factual determination reviewed for substantial evidence)