In Re: Walter
698 F. App'x 1022
| Fed. Cir. | 2017Background
- Patent owner David Walter sought ex parte reexamination of U.S. Patent No. 7,513,711, which claims artificial reefs formed from a "block-like support structure" of frame members with attachable concrete slab walls containing embedded stones.
- During reexamination Walter amended claim 1 to recite a "block-like support structure made of a plurality of frame members," and submitted an expert declaration explaining "block-like" as discrete solid blocks.
- The examiner rejected the amended claims for obviousness, lack of written description, and indefiniteness, construing "block" (via a dictionary) to require flat sides and finding the claim language inconsistent with that meaning.
- Walter argued before the Board various constructions: (a) "block-like" meaning "discrete pieces conjoined," (b) meaning that individual frame members are cuboid, and (c) other shifting formulations; he did not consistently rely on his expert declaration.
- The Patent Trial and Appeal Board held the term "block-like" indefinite (and affirmed the written-description rejection), concluding the intrinsic record used the term inconsistently and gave no objective boundaries; Walter appealed.
- The Federal Circuit affirmed, finding "block-like" a term of degree lacking objective boundaries in the intrinsic record and noting Walter’s inconsistent positions and unhelpful expert declaration.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether "block-like" in amended claims is indefinite under 35 U.S.C. § 112 | Walter: the term is understood by one of skill in the art (per Miller) or can be read as referring to cuboid/ discrete frame elements | PTO/Board: the claim reads "block-like support structure" (not "block-like frame members"); the term is a term of degree and the specification/prosecution do not provide objective boundaries | Held indefinite: the term is a term of degree with no objective boundaries in the intrinsic record; claims 1–12 indefinite |
| Whether Board erred by disregarding Walter's expert declaration | Walter: Miller shows "block-like" is a term of art and establishes understanding | Board/PTO: declaration is conclusory; Walter did not rely on it before the Board | Held: expert declaration entitled to no weight (conclusory) and patentee failed to rely on it before the Board |
| Whether inconsistency between specification and dictionary definition renders claim indefinite | Walter: specification/disclosure can control a term’s meaning; term can be construed from specification | Board/PTO: specification used term inconsistently and prosecution history added confusion | Held: Court declines a rule that differing from dictionary alone makes a claim indefinite, but here inconsistent intrinsic record and lack of objective boundaries made term indefinite |
| Whether to reach written-description rejection after indefiniteness ruling | Walter: challenged written-description rejection as well | Board: also rejected written description (affirmed initially) | Held: Court did not reach written-description merits because indefiniteness dispositive |
Key Cases Cited
- Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir.) (specification is usually dispositive for claim construction)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir.) (court looks first to intrinsic evidence for claim meaning)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (claim indefiniteness standard: must inform skilled artisans of claim scope with reasonable certainty)
- Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374 (Fed. Cir.) (indefiniteness reviewed de novo)
- Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir.) (terms of degree require objective boundaries)
- In re CSB-Systems Int'l, Inc., 832 F.3d 1335 (Fed. Cir.) (broadest reasonable construction in reexamination)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (standard of review for claim construction and factual findings)