Hedging Your Bets May Ultimately Cost You the Pot

IQASR v Wendt


IQASR sued Wendt Corp. (“Wendt”) for infringement of US patent 9,132,432 (“the ‘432 patent”).  The ‘432 patent is directed to methods of sorting recyclable materials from non-recyclable materials in the residue from the shredding of junked vehicles.  After a Markman hearing, the district court found the claims terms “magnetic fuzz” and “low susceptance microparticles” indefinite.  Based upon this conclusion, the district court held the ‘432 patent invalid under 35 USC §112.

Extrinsic evidence

Claim 1 of the ‘432 patent recites a method of separation of automobile shredder residue comprising…non-magnetically sorting magnetic fuzz from said automobile shredder residue…wherein said sorted magnetic fuzz is substantially free of recyclable materials.’  To construe “magnetic fuzz,” the district court weighed competing expert testimony on the issue of whether or not an ordinary meaning for the term existed in the art at the time of the invention, finding Wendt’s expert more credible.  The district court diregarded other extrinsic evidence presented by IQASR as not contemporaneous with the patent.

Intrinsic evidence

When the extrinsic evidences establishes that no ordinary meaning exists, it is left to intrinsic evidence to provide sufficient boundaries to the scope of the term.  In this case, efforts to avoid unduly limiting the disputed claim terms went to far.  For example, the specification described that magnetic fuzz was one type of low susceptance microparticle, but not the only one.  Indeed, the specification itself taught that “dissociated magnetically active microparticles may be magnetic fuzz because these particles may be difficult to substantially identify.”  Regarding this drafting choice, the Court held:

The equivocation and subjectivity displayed in this statement present obstacles to understanding no matter the reader’s technical background.

The equivocation, and the Court’s frustration with the same did not end there:

Because the multiple layers of definitions are all open-ended and non-limiting, a skilled artisan must wade through a morass of uncertainty and contradiction to get to this point.  It is this word salad of inconsistent indirect definitions and examples that so flummoxed the district court…A technical degree or industrial experience does not confer the ability to transcend patent ambiguity.

Backpedaling, IQASR pointed out that the specification repeatedly used the term “may” to describe and define the terms in dispute.  The Court rejected this argument as well:

A patentee cannot simultaneously use non-modal verbs to avoid limiting the scope of an invention while also arguing that those same examples define the limits of the invention.  And this is especially true when the non-limiting examples include both possibilities of a binary property.

Take home lesson

Your invention cannot be limitless.  It cannot be everything.  Do not define a claim term as “difficult to identify.”

Additional discussion of a concept may obfuscate the concept just as much as it may clarify it…We further note that even if an artisan were to pierce the fog of microparticle definitions, the chief definitional characteristic of magnetic fuzz remains that it is “difficult to substantially identify.”

In efforts to avoid being unduly limiting, IQASR ended up filing an application that wasn’t limiting at all, thereby taking a wrecking ball to their claims.