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January 26, 2013


Ernie Ball v. Earvana presents episodic ineptness by a patent prosecutor, examiner, litigators and district court judge. 6,433,264 claims "a compensated nut for a stringed instruments," as a means for tuning for "fixed intonation portions [that] does not form a sinusoidal arc."

Ernie Ball v. Earvana (CAFC 2012-1276) nonprecedential; Judges Newman, Lourie (author), and O'Malley

After a bench trial, the district court found '264 valid and infringed, awarding $165,016.80 in damages and a permanent injunction.

Earvana initially filed its appeal in the United States Court of Appeals for the Ninth Circuit, which concluded that this case "arises under patent law" and therefore lies outside of its appellate jurisdiction. Ernie Ball, Inc. v. Earvana, LLC, No. 11-55532 (9th Cir. Mar. 14, 2012). The Ninth Circuit transferred the appeal to this court, and we [the CAFC] have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

This was indicative of patent ignorance by the litigators and district court.

Before addressing the merits, we must note that the parties make no more than passing reference to any particular claim, generically structuring their arguments on claim construction, infringement, and validity as if they applied to the '264 patent as a whole, rather than, as they must, to one or more of its discrete claims.
As is black letter law, the claims define the exclusive rights conferred by a patent, and the validity and infringement of those rights must be evaluated on a claim by claim basis. E.g., Amazon.com, Inc. v. Barnesandnoble.com, Inc., 239 F.3d 1343, 1351 (Fed. Cir. 2001); SRI Int'l v. Matsushita Elec. Corp. of Am., 775 F.2d 1107, 1121 (Fed. Cir. 1985) (en banc).
Confronted by the same ambiguity, the district court appears to have treated claim 1 as representative of all of the asserted claims. See Summary Judgment, slip op. at 15. Neither party has criticized the district court's focus on claim 1, and we interpret their arguments on appeal as adopting that approach. See Appellee's Br. 18 (framing blanket claim construction arguments with reference to claim 1). Accordingly, we too will treat claim 1 of the '264 patent as representative of asserted claims 1-4, 6-10, and 21-23 for purposes of this appeal.

On to the merits, or lack thereof. First up: the construction of "sinusoidal."

Claim construction is a matter of law, reviewed de novo on appeal. Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). The parties to this case dispute the meaning of the term "sinusoidal" as used in the claims of the '264 patent--specifically, whether the intonation portions of the accused Earvana products are "configured such that a line extending through the one or more fixed intonation portions does not form a sinusoidal arc," see '264 patent col. 9 ll. 53-55, and whether the prior art disclosures of LoJacono anticipate or render obvious the properly construed claims of the '264 patent.
The district court perceived the ordinary meaning of "sinusoidal" to indicate a configuration conforming to the shape of a sine wave or arc. Apparently finding no guidance in the '264 patent itself, the court turned to the prior art LoJacono patent for insight into the proper construction. The court noted a "significant possibility" that LoJacono could be read to use the term "sinusoidal" as "indicat[ing] any configuration not conforming to a straight line," but it concluded that, on balance, LoJacono supported interpreting the term "sinusoidal" in the claims of the '264 patent according to its more restrictive plain meaning. The district court therefore construed "sinusoidal" to mean "a configuration that strictly conforms to the shape of a sine wave or arc." Summary Judgment, slip op. at 10-14. Paradoxically, the district court's narrow construction of "sinusoidal" in view of the prior art had the practical effect of conferring expansive scope on Ernie Ball's overarching claims, which incorporate the term in a negative limitation (i.e., the claims require configurations that are not sinusoidal). Accordingly, under the district court's construction, the asserted claims cover fixed compensated nuts having any configuration that does not strictly conform to the shape of a sine wave or arc.
We conclude that the district court's construction of the term "sinusoidal" was correct. The plain meaning of "sinusoidal" connotes conformity with a mathematically defined curve derived from the trigonometric sine function, 3 and neither the specification nor the prosecution history of the '264 patent clearly sets forth a different definition. See Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996) ("[W]ords in a claim are generally given their ordinary and customary meaning, [but] a patentee may choose to be his own lexicographer and use terms in a manner other than their ordinary meaning, as long as the special definition of the term is clearly stated in the patent specification or file history.").
3 The sine function is commonly represented by the mathematical formula y = A(sin(Bx + C)) + D, where the variables A, B, C, and D dictate the resulting curve's amplitude, frequency, phase shift, and vertical shift, respectively.
The specification of the '264 patent provides little guidance. The word "sinusoidal" appears in the specification only once--in a passage describing the subject matter of the LoJacono patent. See '264 patent col. 2 l. 16. As for the prosecution history, the limitation excluding "sinusoidal" configurations from claim 1 was introduced by amendment after several years of prosecution and repeated rejections based on LoJacono. In comments accompanying the amendment, Ernie Ball argued that LoJacono disclosed compensated nuts having a sinusoidal configuration and "taught away from any fixed nut that was not sinusoidal" such as those specified in the amended claims of the '747 application. In essence, Ernie Ball equated "sinusoidal," as used in the amended claims, with "that which is not disclosed by LoJacono," however understood. As the district court recognized, however, and despite Earvana's arguments to the contrary, LoJacono itself provides no clear definition of "sinusoidal" in the context of compensated guitar nuts.
Accordingly, we conclude that one of ordinary skill in the art reading the '264 patent in view of the relevant intrinsic record would rely on the term's ordinary meaning and would therefore understand the term "sinusoidal," as used in claim 1, to indicate "a configuration that strictly conforms to the shape of a sine wave or arc."

Everything might otherwise be fine, except that the claim was woolly on the sine.

Before the district court, Earvana consistently argued that "the '264 patent is invalid" pursuant to §§ 102, 103, and 112. Unfortunately, the dialogue on validity essentially ended there. The parties' submissions never evolved beyond the most barren generalities, characterized by cursory recitations of statutory bases for invalidity and untethered debate about the LoJacono reference. As a result, the arguments on both sides lacked fundamental details at every turn--for example, which claims were challenged under each section, which limitations of those claims were in dispute, and which specific provisions of § 112 were at issue, to name a few--leaving the district court to guess at which of many possible validity issues were material to resolving the dispute.
The parties' lack of focus, not surprisingly, is reflected in the district court's judgment on invalidity; its entire analysis spans only a single paragraph. Notably, the district court's discussion fails even to address § 112, much less analyze the validity of any claim in view of that section's multiple substantive requirements. Given the uncomplicated subject matter of the instant patent and the prior art patent, however, it is clear from the record that the asserted claims fail the definiteness requirement of § 112, ¶ 2.
While Earvana has not specifically pointed to the definiteness requirement of § 112, ¶ 2, it did challenge the asserted claims as invalid under § 112 in the district court, and it maintains that assertion on appeal.
In short, it is impossible to tell based on the set of discrete points defined by the intonation portions of a given compensated guitar nut whether "a line" extending through those points does or does not form a sinusoidal arc because those points provide no information regarding the line's shape or position as it traverses the intervening spaces. As a result, the question whether a fixed compensated nut with any particular arrangement of intonation portions would infringe claim 1 of the '264 patent depends on which among a limitless number of possible lines extending through those intonation portions one has in mind at any given time. In other words, ascertaining the scope of claim 1 reduces to a matter of subjective perception.
"When faced with a purely subjective phrase . . . a court must determine whether the patent's specification supplies some standard for measuring the scope of the phrase." Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1351 (Fed. Cir. 2005). Here, the '264 patent offers no objective way to discern the appropriate (sinusoidal or non-sinusoidal) line extending through the intonation portions of a nut for purposes of determining infringement. As in Datamize, claim 1 thus "fails to delineate the scope of the invention using language that adequately notifies the public of the patentee's right to exclude." Id. at 1353. Accordingly, claim 1 is invalid for failure to satisfy § 112, ¶ 2. In addition, because the parties have treated claim 1 as representative of all of the asserted claims, and because each of those claims suffers from a similar lack of clarity, we conclude those claims are also invalid as indefinite.
Because we conclude that asserted claims 1-4, 6- 10, and 21-23 of the '264 patent are invalid on grounds of indefiniteness, we need not reach the parties' remaining arguments concerning validity, inequitable conduct, infringement, or damages. For the foregoing reasons, we reverse the final judgment of the district court.

This is an exceedingly rare ruling. A patent claim must be most sincerely inscrutable under CAFC case law to find indefiniteness. Given that rarity, why this ruling was not precedential is also inscrutable.

Posted by Patent Hawk at January 26, 2013 12:43 AM | § 112