Case Information
*2 Before P ROST Chief Judge, W ALLACH and H UGHES
Circuit Judges.
H UGHES , Circuit Judge
GE Lighting Solutions sued Defendants for infringing U.S. Patent Nos. 6,787,999 and 6,799,864—two patents directed to dissipating heat from light emitting diode lamps. The district court correctly found the asserted ’864 patent claims indefinite, but erroneously determined that the asserted ’999 patent claims are indefinite. According- ly, we affirm-in-part, reverse-in-part, and remand for further proceedings. .
I
This appeal results from the consolidation of several cases arising from the United States District Court for the Northern District of Ohio. One of those cases, GE Light- ing Solutions, LLC v. Technical Consumer Products, Inc. , Case No. 5:12-cv-3127 (N.D. Ohio) ( GE Lighting I ) was assigned to Judge Adams, while the other cases (collec- tively, GE Lighting II ) [1] proceeded before Judge Polster .
After the GE Lighting I court construed certain dis- puted claims, the GE Lighting II defendants moved for summary judgment on the grounds that the terms “elon- gated” and “to heat sink” render the asserted claims indefinite. The GE Lighting II court agreed and thus held that the asserted claims are indefinite. Because the GE Lighting II indefiniteness findings were entitled to pre- clusive effect, the GE Lighting I court entered judgment against GE. GE appeals both final judgments here.
II
“We review a district court’s ultimate determination
that a claim is invalid as indefinite under 35 U.S.C. § 112
¶ 2 de novo, although, as with claim construction, any
factual findings by the district court based on extrinsic
evidence are reviewed for clear error.”
UltimatePointer,
L.L.C. v. Nintendo Co.,
cution history,” they “fail to inform, with reasonable
certainty, those skilled in the art about the scope of the
invention.”
A
GE asserted claims 1, 4–8, 10, 12, and 14–16 of the ’864 patent against Defendants. The asserted claims all require a thermally conductive core, which draws heat from the LEDs and dissipates it into the air. Each assert- ed claim also requires (directly or by dependence) that the thermally conductive core be “elongated.” J.A. 28. The district court construed “elongated” to mean “extending in length.” J.A. 11, 14–15. The court then found the assert- ed claims indefinite because a person of ordinary skill in the art could not be reasonably certain of the claim scope in light of the term “elongated.” J.A. 22–23. We agree.
“Elongated” is undoubtedly a term of degree. Alt-
hough “terms of degree are [not] inherently indefinite,”
the patent must provide “some standard for measuring
that degree” such that the claim language “provide[s]
enough certainty to one of skill in the art when read in
the context of the invention.”
Biosig Instruments, Inc. v.
Nautilus, Inc.
,
The ’864 patent fails to do so. As GE’s expert admit- ted, an ordinarily skilled artisan cannot, without addi- tional information, differentiate an “elongated” core from a “non-elongated” core. J.A. 2060–62. “Elongated” ap- pears nowhere in the specification, nor, as GE admits, are the core’s dimensions otherwise described in text or drawings. See J.A. 5588. And in the prosecution history, GE distinguished two prior art references disclosing heat sinks, Reisenauer and Serizawa, as not containing an “elongated” element. See J.A. 5894 (“There is nothing in Serizawa’s plate shaped heat sink 153 that could be described as ‘elongated.’”); id. (“Reisenaur [sic] discloses a disk or plate shaped heat sink which cannot be considered to be elongated”); J.A. 5896 (“Applicants find no aspect of element 28 [of the Reisenauer prior art reference] which could conceivably be called ‘elongated.’”). But the disk of Reisenauer and the plate in Serizawa both extend in length, which creates an unresolved ambiguity as to how the prior art elements are not considered to be “elongat- ed.” A person of ordinary skill thus has no objective means to determine which cores are “elongated” and which are not.
Although “a patentee need not define his invention
with mathematical precision,”
Invitrogen Corp. v. Biocrest
Mfg., L.P.
,
B
GE also asserted claims 8, 9, and 12 of the ’999 pa- tent, which covers certain LED lamps. The asserted claims cover an LED lamp that contains a heat sink with an LED module on one side and an electronic module on the other side. See ’999 patent col. 10 ll. 7–20. The heat sink draws heat from both components, which are “in thermal communication” with the heat sink. Id. The heat sink then dissipates heat into the air. Id. col. 4 ll. 45–50, col. 8 ll. 55–59. The court construed the noun “heat sink” to carry its plain and ordinary meaning and adopted GE’s proposed construction of “to heat sink” as “to receive and dissipate heat from.” The district court then found that the phrase “to heat sink” renders the asserted claims indefinite. GE argues that the phrase “to heat sink” does not render the asserted claims of the ’999 patent indefi- nite. We agree.
As the district court recognized, “[t]he claims, specifi-
cation and prosecution history demonstrate[] that
any
amount
of heat transfer is sufficient for ‘heat sink (verb).’”
J.A. 25–26 (emphasis added). And that is true even if a
lamp’s design seeks to minimize heat transfer. J.A. 27
(“[A]s [heat sinking] is used in the ’999 Patent, an object
that is shielded from receiving heat is still ‘heat sink-
ing.’”). Thus, whether a component heat sinks another
component is an objectively defined fact: either heat is
transferred between the components and heat sink, or it
is not. Because “to heat sink” creates no “zone of uncer-
tainty,”
see Nautilus
,
III
Accordingly, we affirm-in-part, reverse-in-part, and remand for proceedings consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
No costs.
Notes
[1] Unless otherwise mentioned, all references here are to GE Lighting II
[2] The patents-in-suit were filed before the adoption of the Leahy-Smith America Invents Act, Pub. L. No. 112– 29, § 3, 125 Stat. 284, 285–93 (2011), and so the prior version of § 112 governs. See Fleming v. Escort, Inc. , 774 F.3d 1371, 1374 n.1 (Fed. Cir. 2014).
[3] Because the asserted claims are not indefinite based on the clear intrinsic evidence, we need not consider any extrinsic evidence. See Profectus Tech. LLC v. Huawei Techs. Co. , 823 F.3d 1375, 1380 (Fed. Cir. 2016) (“Extrinsic evidence may not be used to contradict claim meaning that is unambiguous in light of the intrinsic evidence.” (internal quotation marks omitted)).