Sonix owns a patent on using a “graphical indicator” on a surface such as a children’s book to subtly encode information about the surface. It can be used with an optical reader to allow the reader to play, for example, a pig sound when placed over the image of a pig.
The claims say that the graphical indicator has to be “visually negligible.” When Sonix sued someone on that patent, they (eventually) said that term was indefinite.
The district court agreed, and as seems to be common in these indefinite cases, the Federal Circuit reversed:
a skilled artisan would understand, with reasonable certainty, what it means for an indicator in the claimed invention to be “visually negligible.”
The decision cites examples of visually negligible indicators called out in the patent specification. But the decision also states that the parties’ own behavior during the litigation supports the result.
- No one involved in either the first or the second reexamination had any apparent difficulty in determining the scope of “visually negligible.”
- During the second reexamination, the examiner was able to understand and apply the term in performing a search for prior art and make an initial rejection.
- The parties’ experts also had no difficulty in applying “visually negligible.”
I’m not a fan of citing litigant behavior in support of legal conclusions. Litigants make many complex decisions about which arguments to pursue and which to drop, and it’s impossible to reconstruct that calculus on a cold record. Courts should stick to the law and focus on providing predictable guidance on that basis. But it does seem common for courts to cite such behavior so you have to be careful.