Saturday, March 8, 2014

An Indefinite Claim Term Yields An Indefinite Claim, Right?


Every Penny Counts sued Wells Fargo Bank for infringement of U.S. Patent 8,025,217 directed to a method and system to create and distribute excess funds from consumer spending transactions.  Generally, the '217 patent describes a system where transactions are rounded up to the next nearest dollar, with the excess amount being placed into a separate account.  Claim 1 is reproduced below:

1. A system for accumulating credits from a customer account belonging to the customer and managed by an institution and placing the credits into a provider account, comprising:

an information processor; said information processor including a data store with data identifying the customer, the rounding determinant, the managed institution, and the account;

said data store including machine readable instructions authorizing the processor to access and read the customer account;

said data store including machine readable instructions to calculate rounders after receiving a plurality of payment transactions from the read customer account and to calculate an excess based on the rounders;

said data store including machine readable instructions to withdraw the excess from the customer account;

said data store including machine readable instructions to transfer the withdrawn excess to the provider account.

The boldfaced terms above address the problem resolved by the Court recently.  The preamble introduces "a customer account" and "a provider account," but the information processor does something with "the account."  The defendant argument is that such drafting is indefinite as it does not clearly identify what is covered.

As every patent lawyer knows, each claim term must have a proper "antecedent basis," meaning before a definite article (i.e. "the") is used to describe the term, the term must have first been introduced earlier in the claim.  But the foregoing sentence is not a complete statement of the law:
The requirement of antecedent basis is a rule of patent drafting ..., [but] the failure to provide explicit antecedent basis for terms does not always render a claim indefinite.  Energizer Holdings, Inc. v. Int'l Trade Comm'n, 435 F.3d 1366, 1370 (Fed. Cir. 2006).  Instead, in "the absence of explicit antecedent basis ... [,] the scope of a claim [must] be reasonably ascertainable by those skilled in the art.  Energizer Holdings, 435 F.3d at 1370 (construing Bose Corp. v. JBL, Inc., 274 F.3d 1354, 1359 (Fed. Cir. 2001)).
The Court went on to discuss numerous typographical and other scrivenor's errors riddled throughout the '217 specification.  For example, in addressing plaintiff's argument concerning the use of singular words versus plural, the Court stated:
The patent is infested with scrivener's (and other) errors, and the prospect of a missing "s" fits comfortably within the patterns discernible in the patent. . . . These errors - which say nothing of the drafter's grammatical and syntactical incompetence and bemusing judgment - confirm that "account" lacking an "s" by mistake accords with the level of compositional adroitness and dexterity that pervades the patent.
Ouch.  (Added as a footnote to the above quotation was the Court's explanation of "bemusing judgment" noting that one of the many acronyms used in drafting the specification was "PMS".)

The Court concluded the term "the account" was indefinite.  But that does not resolve the question of whether or not Claim 1 is indefinite.  And for that, the Court said no.  Indefiniteness of a claim is a very high standard:
[A] somewhat indefinite term, depending on the centrality of the term to the claim, is not necessarily equivalent to a fatally indefinite claim.
The Court appears to be as impressed with the law on this topic as it is with the '217 patent's specification:
The sources for the resolution of ambiguity in a claim include resort to either or both of the specification (of which the claim is a part) and the prosecution history.  The familiar decisional precedent, perennially groping for a less indefinite definition of "indefinite," requires that to invalidate a claim for "indefiniteness" the district court must determine that, clearly and convincingly and contrary to the presumption of validity, the claim is "insolubly ambiguous" and "not amenable to claim construction.
And under this test, the claim must survive:
The '217 patent is a notably simple (although vexingly composed) patent that addresses a notably simple subject -- an authorized movement of money from one account to another account after a simple mathematical computation.  Although the entire patent is awkwardly drafted, the oppugned claim is simple.  The specification is simple.  The drawings are simple.  The patent as a whole, notwithstanding the deficiencies, seems understandable; the claim seems understandable.  In short, the indefiniteness of the term "the account" leaves no unmanageable gap in the information available for determining the scope of the claim.  No practical incapacity or disabling uncertainty appears as a consequence of the fact that "the account" might mean one thing or the other.  In sum, the extent of the indefiniteness in the term "the account" is inconsequential and falls far short of the "insoluble ambiguity" required to invalidate the claim.
Motion for partial summary judgment for indefiniteness, denied.  (Dennis Crouch at Patently-O has also written on this case here.)
Every Penny Counts, Inc. v. Wells Fargo Bank, N.A., Case No. 8:11-CV-2826 (M.D. Fla. Mar. 5, 2014) (J. Merryday)