Power-One v. Artesyn Technologies (CAFC 2008-1501) precedential

Patents in suit: 6,949,916; 7,000,125; 7,049,798.

The term POL regulator is not defined in the '125 patent and after a Markman hearing was held, the district court rejected Artesyn's argument that the term was indefinite and construed it to mean:

[A] dc/dc switching voltage regulator designed to receive power from a voltage bus on a printed circuit board and adapted to power a portion of the devices on the board and to be placed near the one or more devices being powered as part of a distributed board-level power system.

Claim construction case law generally -

When construing claims, the intrinsic evidence is the primary resource. See Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir. 2005) (en banc). Claim terms are "generally given their ordinary and customary meaning," the meaning that the term would have to "a person of ordinary skill in the art . . . at the time of the invention." Id. at 1312-13 (internal citations omitted). The terms, as construed by the court, must "ensure that the jury fully understands the court's claim construction rulings and what the patentee covered by the claims." Sulzer Textil A.G. v. Picanol N.V., 358 F.3d 1356, 1366 (Fed. Cir. 2004).

Closer to (adapted to, or near) the mark, context matters -

[D]espite Artesyn's contention, the terms "adapted to" and "near" are not facially vague or subjective. Claims using relative terms such as "near" or "adapted to" are insolubly ambiguous only if they provide no guidance to those skilled in the art as to the scope of that requirement. See Datamize, 417 F.3d at 1347 (the definiteness of a claim's terms depends on whether those terms can be given a reasonable meaning by a person of ordinary skill in the art); see, e.g., Young, 492 F.3d at 1346 ("near" not indefinite); Central Admixture Pharm. Servs., Inc. v. Advanced Cardiac Solutions, 482 F.3d 1347, 1356 (Fed. Cir. 2006) ("adapted to" not indefinite); Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1120 (Fed. Cir. 2002) (same). Here, a person of ordinary skill in the field would understand the meaning of "near" and "adapted to" because the environment dictates the necessary preciseness of the terms.

On "near":

The patent's functionality requirement restricts the boundaries of where the regulator can be located in relation to the load it is powering. A skilled artisan in distributed power systems would know where to place the regulator to accomplish that stated objective.

The specification made clear what "adapted to" meant.

This language unambiguously indicates to a skilled artisan that the output power of a POL regulator would be at the level required by, and thus "adapted to," the electronic circuit receiving power from the POL regulator.

The fact that the claim is not defined using a precise numerical measurement does not render it incapable of providing meaningful guidance to the jury because the claim language, when taken in context of the entire patent, provides a sufficiently reasonable meaning to one skilled in the art of distributed power systems. Therefore, we find that the district court's claim construction of the term POL regulator was adequate to fully describe the scope of the claims.

Artesyn had also argued indefiniteness, a very high bar under current CAFC case law.

Pursuant to § 112 of the Patent Act, to be sufficiently definite, a patent specification must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. To comport with § 112's definiteness requirement, the boundaries of the claim, as construed by the court, must be discernible to a skilled artisan based on the language of the claim, the specification, and the prosecution history, as well as her knowledge of the relevant field of art. See Halliburton Energy Servs., Inc. v. M-1 LLC, 514 F.3d 1244, 1249-51 (Fed. Cir. 2008). When a claim is "not amenable to construction or [is] insolubly ambiguous" it is indefinite. Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). However, a claim is not indefinite merely because it poses a difficult issue of claim construction. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). Rather, "if the meaning of the claim is discernible, even though the task may be formidable and the conclusions may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Id. at 1373.

Here, the term "POL regulator" is not indefinite.

The obviousness argument had no juice either.

Title 35, United States Code, Section 103 "forbids issuance of a patent when 'the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains.'" KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 405 (2007) (quoting 35 U.S.C. § 103). The determination of obviousness under 35 U.S.C. § 103 is a legal question based on underlying questions of fact. In re Kumar, 418 F.3d 1361, 1365 (Fed. Cir. 2005).

The underlying factual considerations in an obviousness analysis include: 1) the scope and content of the prior art; 2) the differences between the prior art and the claimed invention; 3) the level of ordinary skill in the art; and 4) any relevant secondary considerations. See Graham v. John Deere Co., 383 U.S. 1, 17-18 (1966); PharamStem Therapeutics, Inc. v. ViaCell, Inc, 491 F.3d 1342, 1359 (Fed. Cir. 2007). Relevant secondary considerations include: commercial success, long-felt but unsolved needs, failure of others, and the presence of a motivation to combine, or avoid combining, prior art teachings. KSR, 550 U.S. at 406, 415-18. Because a patent is presumed to be valid, to prevail on its JMOL Artesyn was required to prove that the '125 patent was obvious by clear and convincing evidence. See AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003).

Artesyn threw seven prior art references, but "did not provide a plausible rational as to why the prior art references would have worked together to render the claims of the '125 patent obvious." It should be obvious that Artesyn did not employ Patent Hawk, or they would have stood a much better chance of prevailing.

Affirmed.