Ambiguities in the plain language of the claims may be resolved rather than held indefinite by taking into account how a person of ordinary skill in the art at the time of the invention would have understood the limitation at issue after reading the intrinsic record. Here, for example, the claimed “contact hole for source wiring and gate wiring connection terminals” was found to be “sufficiently clear [to] a person of ordinary skill in the art” as “calling for separate, different contact holes for the source wiring connection terminals and gate wiring connection terminals, rather than one shared contact hole” as an unskilled person might interpret it, and therefore not indefinite. “We reverse the district court’s finding of indefiniteness because [the patentee’s] proposed construction for the disputed limitation reflects how a person of ordinary skill in the art at the time of the invention would have understood the limitation after reading the intrinsic record.” Although plain language clarity is preferred at the initial drafting stage, this would be a good case to consult and cite in response to an indefiniteness rejection predicated on an unsophisticated reading of the claim language.
Background / Facts: The patent being asserted here is directed to manufacturing processes that reduce the number of photolithographic steps for fabricating an electro-optical device, such as a liquid crystal display (LCD). As part of an otherwise conventional step in the process, the lone issued claim recites “a contact hole for source wiring and gate wiring connection terminals.” The patentee argued that the disputed limitation requires separate and distinct contact holes for the source wiring connection terminals and gate wiring connection terminals, consistent with the standard industry practice, whereas the accused infringer argued that the plain language of the disputed limitation requires a shared contact hole for all connection terminals.
Issue(s): Whether the disputed limitation renders the claim indefinite under 35 U.S.C. § 112(b) for lack of a construction that would allow a person of ordinary skill in the art to determine what is claimed.
Holding(s): No. “We reverse the district court’s finding of indefiniteness because [the patentee’s] proposed construction for the disputed limitation reflects how a person of ordinary skill in the art at the time of the invention would have understood the limitation after reading the intrinsic record.” Although the limitation-at-issue, “by itself, might suggest to someone unknowledgeable in the field of LCD manufacturing that one contact hole is formed for all the source wiring connection terminals and gate wiring connection terminals, as the [accused infringers] argue,” it “might also indicate that many contact holes are formed for the connection terminals,” and “[t]he intrinsic record here makes sufficiently clear that a person of ordinary skill in the art—someone with knowledge of LCD manufacturing—after considering the limitation ‘in the context of the particular claim in which the disputed term appears, [and] in the context of the entire patent, including the specification’ [], would understand the limitation-at-issue to call for separate, different contact holes for the source wiring connection terminals and gate wiring connection terminals, rather than one shared contact hole.”