Energizer Holdings, Inc. et al. v. International Trade Commission et al.

*           “Claims (are) indefinite only if reasonable efforts at claim construction prove futile.”

Eveready attacked Chinese competitors at the International Trade Commission (“ITC”) for allegedly infringing Eveready’s patent claims to a low mercury alkaline battery having a “said zinc electrode.”  The ITC held all claims invalid for indefiniteness under 35 U.S.C. 112(2) because the term “said zinc anode” lacked antecedent basis and because test parameters recited in the claims implied that product must be tested in order to infringe.  Eveready appealed to the Federal Circuit.

The Federal Circuit reversed the invalidity holding with the comment that “a claim is not indefinite because it is hard to construe” and the scope of Eveready’s claims “would be reasonably ascertainable by those skilled in the art.”

The Federal Circuit used common sense in overlooking simple patent drafting errors that a litigation opponent had pounced upon to prove invalidity.   To prevent such expensive problems, good, proper English must be used when drafting or translating claims.  A practitioner should not rely on the poor English of patent office examiners.

Xerox Corporation v. 3Com Corporation et al.

Decided June 8, 2006

Judge Bryson with Judges Newman and Rader

*     A claim is not indefinite when the specification provides "a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine whether" the "claim limitation is satisfied."

Xerox sued 3Com at the U.S. District Court for the Western District of N.Y. for allegedly infringing claims to a handwriting recognition method that interprets "unistroke symbols" that are separated in "sloppiness space." Judge Michael Telesca granted 3Com summary judgment of invalidity partly because certain claims that recite the term "sloppiness" are indefinite. Xerox appealed to the Federal Circuit.

The Federal Circuit reversed, noting that "the specification explicitly defines symbols that are well separated from each other in sloppiness space." And, while "not rigorously precise" such was "adequate guidance…in light of the difficulty of articulating a more exact standard for the concept."

This was a second appeal from summary judgment after a district court had construed claim terms for a difficult to describe technology (computer analysis of hand writing). When introducing new terms in this situation, a practitioner should be as explicit as possible and provide examples of term use.