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March 29, 2005
District Court Insufficiently Boneheaded
Tranquil Prospects owns 5,222,985 and 4,636,214, about bone prostheses implants. Howmedica Osteonics, staring down the barrel of an infringement assertion gun, popped off the first shot by seeking a declaratory judgment in northern Indiana district court that the claims of both patents were invalid by reason of indefiniteness. One can only suppose that being plaintiff really carries a heavy presumption in northern Indiana.
Tranquil counterclaimed for patent infringement.
"The definiteness of a patent claim depends on whether one skilled in the art would understand the bounds of the claim when read in light of the specification." Union Pac. Res., 236 F.3d at 692 (citing Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986)).
In this case, the assertion of invalidity by indefiniteness focused on the meaning of a claim limitation referring to "transverse sectional dimensions".
A "transverse section" is a two-dimensional slice taken perpendicular to the vertical axis of the bone. The claim construction contention revolved around whether "dimensions" meant one-dimensional, i.e. a line, or two-dimensional, i.e. an area.
The district court was not swayed to:
1) look at the drawings (see above);
2) regard the 35 mentions in the disclosure of dimensions, including
differentiating between "dimension" and "dimensions";
3) observe that the word "dimensions" is plural (hint: meaning at least two);
4) take a clue from claim language mentioning
"cross-sectional area";
5) consider that the overriding purpose of the
invention was to shape a prosthesis to fit snugly
(ever heard of a
one-dimensional snug fit?);
6) believe expert witness testimony; or
7) credit prosecution estoppel
on the issue.
Unable to fathom "dimensions" as being one- or two-dimensional, the district court ruled the claims indefinite, and the patents invalid.
Tranquil calmly appealed.
The appeals court, fathoming unfathomable dimensions, reversed the district court on March 28, 2005.
Posted by Patent Hawk at March 29, 2005 12:06 AM | Claim Construction