By Deirdre Kennedy, J.D.
The claim term "magnetic fuzz" lacked a clear definition in its field.
A patent for an automobile scrap recycling process was invalid for indefiniteness because of the use of the term "magnetic fuzz," which lacked a readily-understood definition among persons of ordinary skill in the art, the U.S. Court of Appeals for the Federal Circuit has held. Use of the term left skilled artisans to consult the unpredictable vagaries of any one person’s opinion, which rendered the patent indefinite. Accordingly, a district court’s finding of invalidity was affirmed (IQASR LLC v. Wendt Corp., September 15, 2020, Hughes, T.).
IQASR’s U.S. Patent No. 9,132,432 (the ’432 patent) teaches various methods to sort recyclable materials from non-recyclable materials in "automobile shredder residue." The ’432 patent’s claimed methods aim to enhance the separation of non-recyclable materials like "trash and magnetic fuzz" from recyclable materials like "plastics and metals," allowing recovery of more recyclable materials. IQASR sued Wendt Corp. for infringement of the ’432 patent. The district court deemed the patent invalid due to indefiniteness, and IQASR appealed.
IQASR asserted that the district court committed multiple legal errors in applying the law of indefiniteness, and that it erred in its findings of fact from both the extrinsic and intrinsic evidence of record.
Indefiniteness. In the face of an allegation of indefiniteness, general principles of claim construction apply. The ordinary and customary meaning of a claim term is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention.
The appellate court did not perceive any clear error in the district court’s finding that "magnetic fuzz" lacks "a readily-understood definition in its field." The district court reviewed evidence from experts on both sides. Although IQASR argued that the expert’s testimony should be discounted because of his lack of direct experience in automobile recycling, the district court was entitled to weigh the expert’s testimony as it thought appropriate based on the expert’s qualifications and experience. That IQASR’s experts provided testimony contradicting Wendt’s expert did not foreclose the district court from finding Wendt’s expert’s testimony clear and convincing evidence that "magnetic fuzz" had no ordinary meaning. The district court could reasonably discount the importance of the more extensive use of the term "fuzz" prior to the invention date or the isolated use of the term "magnetic fuzz" in related, but different recycling contexts. These usages may have given a skilled artisan some context for the meaning of "magnetic fuzz" in the ’432 patent, but IQASR did not establish that these alone could resolve "questions of precision as to the boundaries" of magnetic fuzz.
The district court also did not err in not considering evidence of use of the term "magnetic fuzz," which occurred a considerable time after the time of invention. Altogether, IQASR’s arguments did not leave the Federal Circuit with a definite and firm conviction that the district court clearly erred in finding that "magnetic fuzz" lacked an ordinary and customary meaning in the art at the time of the invention.
The district court’s focus on whether the intrinsic record adequately prescribed the meaning of "magnetic fuzz" was also proper, the appellate court said. Because indefiniteness applies "general principles of claim construction," indefiniteness "involves consideration of primarily the intrinsic evidence—the claim language, the specification, and the prosecution history." When a term "has no ordinary and customary meaning," it is a "coined term," raising the question of whether the intrinsic evidence provides objective boundaries to the scope of the term. The court, in reviewing the intrinsic record, agreed with the district court that the ’432 patent failed to offer any meaningful and functional explanation of the definitional characteristics of "magnetic fuzz," leaving "the nature of that substance … decidedly unclear."
Patent definition of "magnetic fuzz." IQASR argued that the ’432 patent defines "magnetic fuzz" as a light, unrecyclable component of automobile shredder residue, that is a type of magnetic "low susceptance microparticle" and also "magnetically active disassociated microparticles," that would clog a non-ferrous recovery system. The court noted, however, that magnetic fuzz is not the only type of magnetically active disassociated microparticle, making it unclear when one would know whether a magnetically active disassociated particle is magnetic fuzz. The patent explains only that "disassociated magnetically active microparticles may be magnetic fuzz because these particles may be difficult to substantially identify." The court said that the equivocation and subjectivity displayed in this statement presented obstacles to understanding, no matter the reader’s technical background; thus, the Federal Circuit agreed with the district court that the lack of a meaningful description of what constitutes magnetic fuzz would prevent a person skilled in the art from knowing when it is present and how to address it.
Since the patent provided no explanation of what makes a particle "difficult to substantially identify," resolving whether particles are "difficult to substantially identify" requires reliance on subjective opinion alone. On top of this, the inherent uncertainty in the patent’s definition of low susceptance microparticles and magnetically active disassociated microparticles further undermines the definiteness of "magnetic fuzz." Even if a claim term’s definition can be reduced to words, the claim is still indefinite if a person of ordinary skill in the art cannot translate the definition into meaningfully precise claim scope. For this reason, Wendt did not have to "prove by clear and convincing evidence that the claim term was not understood amongst the industry" as IQASR suggested.
Because the district court appropriately scrutinized the intrinsic and extrinsic evidence and suitably applied the law of indefiniteness, the appellate court affirmed its judgment holding the ’432 patent invalid for indefiniteness.
This case is No. 19-2227.
Attorneys: Rudolph A. Telscher, Jr. (Husch Blackwell LLP) for IQASR LLC. Robert R. Brunelli (Sheridan Ross PC) for Wendt Corp.
Companies: IQASR LLC; Wendt Corp.
MainStory: TopStory Patent FedCirNews GCNNews
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