On June 30, 2020, the Federal Circuit issued a decision in Pacific Coast Building v. Certainteed Gypsum, Inc. (nonprecedential) agreeing with the District Court that patentee’s own term “scored flexural strength” was inadequately defined, and therefore indefinite.
Claim 21 of the patent-in-suit read (emphasis added):
21. A laminated, sound-attenuating structure which comprises:
a first gypsum board having two surfaces, …;
a layer of viscoelastic glue …; and
a second gypsum board over said viscoelastic glue, …;
a scored flexural strength of the laminated structure is about 22 pounds per 1/2 inch thickness of the structure;
the scored flexural strength being the flexural strength of the laminated structure after the outer, paper-clad surface of one of the first and second gypsum boards has been scored.
Notably, patentee, acting as their own lexicographer, defined “scored flexural strength” in both the specification and in the claim itself, even referring in the definition to an ASTM standard. Regardless, the court’s analysis of patentee’s definition found too many uncertainties in how to measure and report their novel characteristic “scored flexural strength.”
Takeaways: The use of non-standard physical characteristics to define an invention can be very dangerous, and should not be left to general description alone. Rather, a working or prophetic example that details exactly how the non-standard physical characteristic is measured would likely provide sufficient information for a court to find the term definite.
Judges: REYNA, CHEN, and HUGHES
by Richard Treanor
Richard (Rick) L. Treanor, Ph.D., is a founding partner of Element IP. Rick has more than three decades of experience in intellectual property in both the U.S. Patent and Trademark Office and private practice. Rick focuses his efforts on the creation, maintenance, and defense of IP rights in proceedings that take place inside the USPTO: patent prosecution, patent appeals, inter partes review, post-grant review, derivation proceedings, covered business method review, re-examination, interference, third party submissions, revival, foreign filing licenses, supplemental examination, etc.