Indefiniteness Is Not Determined by the Claim Language Alone
In Nature Simulation Systems Inc. v. Autodesk, Inc. Appeal No. 20-2257, the Federal Circuit held that it was improper for the district court to find patent claims indefinite without considering the specification and prosecution history.
Nature Simulation Systems, Inc. (“NSS”) sued Autodesk, Inc. alleging patent infringement. After a claim construction hearing, the district court found various claims invalid as indefinite. The district court recited several “unanswered questions” about terms in those claims and stated that such unanswered questions render a claim term indefinite as a matter of law, even if the specification answers those questions. NSS appealed.
The Federal Circuit reversed in a 2-1 decision. The majority held that the district court’s analysis involving “unanswered questions” applied an incorrect standard for indefiniteness. The majority emphasized that patent claims are viewed in light of the specification, the prosecution history, and other relevant evidence, and it faulted the district court for relying on the claim language alone. The majority noted that, during prosecution, indefiniteness rejections had been resolved by adding limitations to the claims, including by examiner’s amendment. After also considering the specification, the majority concluded that the claim terms at issue were not indefinite.
Judge Dyk dissented, arguing that the district court had read the patent claims in light of the specification and had properly determined the claim terms at issue were indefinite. According to Judge Dyk, the specification does not explain certain claim limitations that the patent examiner suggested during prosecution, and the majority improperly relied on the fact that the examiner suggested those terms instead of requiring that the specification explain them.
(Computing, Indefiniteness; Prepared by Emily Asgari)
Generic Mark Lacked Sufficient Stylization to Serve as a Source Identifier
In In Re Vox Populi Registry Ltd. Appeal No. 21-1496, the Federal Circuit held that stylizing an otherwise generic character mark using ubiquitous lettering does make it a source identifier.
Vox is the domain registry operator for the .SUCKS generic top-level domain for Internet websites. Vox submitted two trademark applications for the mark “.SUCKS” to the USPTO. The first application was for a standard character mark, and the second application was for a stylized mark using pixelated letters. The TTAB determined that neither the standard character mark nor the stylized mark was registerable because neither mark served as a source identifier. The TTAB explained that the stylized .SUCKS mark did not create a separate commercial impression and was not sufficiently distinctive. Vox appealed the TTAB’s decision regarding the stylized mark to the Federal Circuit.
The Federal Circuit affirmed the TTAB’s decision. The Federal Circuit acknowledged that design or stylization may make an otherwise unregistrable mark registerable if the design features create an impression separate from the words themselves. However, in this case the court found that substantial evidence supported the TTAB’s finding that “given the ubiquity” of pixelated lettering “in the ‘early days’ of computing consumers would view pixelated lettering as ordinary” and not as a source identifier. Although marks with limited stylization may acquire distinctiveness, the ubiquity of the pixelated letter design mandated by earlier technological limitations rendered the .SUCKS stylization ordinary.