"Insoluable Ambiguity" Required for Indefiniteness

In Marley Mouldings, Ltd. v. Mikron Industries, Inc. (Fed. Cir., August 8, 2005) the court reversed a summary jugment of invalidity under 35 U.S.C. §112 ¶2 where the claimed process requiried mixing "in parts (volume)," but the allegedly infringing process measured components by weight, rather than volume. In particular, the lower court held that because infringement depended on the bulk density used to calculate the volumetric percentage of wood flour in the mixture, and because the patent did not state whether the average bulk density or what density range value was to be used, the claims are fatally indefinite.

The appellate court compared the facts of the case to those in Honeywell International, Inc. v. International Trade Commission, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003):

In Honeywell, 341 F.3d 1332, this court held indefinite a claim that included a specified melting parameter of a polymeric yarn but did not state which of four known methods of preparing and testing the yarn was used. In Honeywell there was evidence that the method of preparation and testing was critical to the measurement, and that only one of the four methods produced a measurement within the claimed range; whereby the court concluded that the claims were "insolubly ambiguous, and hence indefinite." Id. at 1340. In Honeywell it was shown that persons in the field of polymer chemistry understood that polymer melting point determinations vary significantly with the method used, rendering the claims "insolubly ambiguous." In contrast, it was not disputed that persons of experience in the field of the '927 invention would understand how to measure parts by volume, and how to convert weight into volume from bulk density data. Accepting the argument that shaking the wood flour may change its compactness, and thus produce different weight values for a given volume of wood flour, this argument relates to whether there is infringement of the claims. Although the district court was concerned that the claims encompass a range of volumes and thereby also of weights, §112 ¶2 is satisfied when the relevant values can be "calculated or measured." W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721 F.2d 1540, 1558 (Fed. Cir. 1983).

Mikron states that measurement of components by weight, not by volume, is the standard practice in the field of polymer processing, and argues that the patentee's failure to conform to this practice is further support for the indefiniteness of the claims. However, non-conformity is not of itself indefiniteness. See, e.g., Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (§112 ¶2 is satisfied when the relevant values can be easily obtained). Marley chose to define and claim its invention based on volume. See In re Chandler, 319 F2d 211, 225 (CCPA 1963) (a patentee's "freedom of choice" in selecting the means to point out and define the invention "should not be abridged").

We conclude that the district court erred in law, in requiring that the specification describe the relationship between volume and weight of the wood filler used or usable in the process. When a claim "is not insolubly ambiguous, it is not invalid for indefiniteness." Bancorp Servs., L.L.C. v. Hartford Life Ins. Co., 359 F.3d 1367, 1372 (Fed. Cir. 2004). The summary judgment of invalidity is reversed. We remand for further proceedings.

One commentator has already noted that the decision failed to consider that the accused infringer did not even perform the initial step of mixing and encapsulating the components at issue. "Not raised in the Federal Circuit appeal is an infringement defense that because accused infringer Mikron does not perform all steps of the patented process, it cannot be a direct infringer," writes Professor Wegner who cites 2003 WL 1989640, 66 U.S.P.Q.2d 1701 (N.D. Ill. 2003)(denying summary judgment of noninfringement) (“Mikron argues that it does not infringe the [ ] Patent because it does not perform the initial step of mixing the particles of wood flour with plastic and subsequent encapsulation to form the pellet. Instead, Mikron purchases pre-made pellets from a third-party vendor, North Wood. Because Mikron does not perform every step of the claimed method, it cannot, and does not, directly infringe the [ ] Patent because the ‘patented invention’ includes the combination of each and every step of the claimed method.”).