Split Fed Circ revives Autodesk patent suit
American software company Autodesk will need to face a rival’s patent infringement suit after the US Court of appeals for the Federal Circuit ruled in a split decision that a district court wrongly invalidated parts of a computer modelling patent.
The majority reversed the US District Court for the Northern District of California’s decision to invalidate some of Nature Simulation Systems’ (NSS) patent claims for indefiniteness and remanded for further proceedings in a precedential decision handed down on Thursday, 27 January.
The patents-at-issue are US patent 10,120,961, and 10,109,105, both are titled “Method for Immediate Boolean Operations Using Geometric Facets.” But according to the circuit, the ‘961 patent is a continuation-in-part of the ‘105 patent and the claims and specifications “do not materially differ” so limited its analysis to the ‘961 patent.
According to the Federal Circuit, the district court erred on the legal standard for claim indefiniteness and failed to take into account a prior decision at the US Patent and Trademark Office that considered and remedied the patent’s indefiniteness.
NSS filed a lawsuit for infringement against Autodesk in California, citing the two patents. The district court held a claim construction hearing and ruled the patents invalid for claim indefiniteness.
The district court based its decision on two of the challenged terms in clauses two of three in the ‘961 patent which covered the inventions “searching neighbouring triangles of the last triangle pair that holds the last intersection point” and a “modified Watson method”.
The court ruled that these two claim terms are indefinite, rendering the two claims invalid and that there were several “unanswered questions” that the claim terms raised. Even if these questions were “answered in the specification”, the court argued that the definiteness requirements were still not met as they should be present in the claims.
However, the Federal Circuit majority stated that the court failed to consider both “intrinsic and extrinsic” evidence when considering the scope of the patent claim as outlined in Phillips v AWH (2005).
Therefore, the circuit held that the district court applied an incorrect standard of “unanswered questions” and conducted a flawed analysis of validity.
The majority also held that the district court rejected a prior USPTO examiners’ indefiniteness analysis and conclusion which added “designated technologic limitations” to the claims.
Writing for the majority, judge Pauline Newman said: “The claims, as amended during prosecution, were held by the examiner to distinguish the claimed method from the prior art and to define the scope of the patented subject matter. The district court made no contrary findings.”
Judge Dyk’s dissent
Breaking away from the majority ruling, Judge Timothy Dyk held that the asserted claims of both patents are invalid for indefiniteness and that the other judges’ conclusion was “manifestly incorrect”.
“The fact that a patent examiner introduced the indefinite language does not absolve the claims from the requirements,” Dyk said.
He also held that the district court conducted a “detailed and thorough analysis” taking into account information in the specification to determine the indefiniteness and scope of the inventions.
“Nothing in the patent specification defines what these additional limitations mean... The majority simply does not address this problem, instead relying on the fact that these limitations were suggested by the patent examiner,” Dyk concluded.
Did you enjoy reading this story? Sign up to our free daily newsletters and get stories sent like this straight to your inbox
Today’s top stories
