Order on Claim Construction and Partial Summary Judgment, Aquatic AV, Inc. v. Magnadyne Corp. et al., Case No. C 14-01931 (Judge William Alsup)
A patent plaintiff typically hates getting boxed into a specific meaning of its patent terms, but every shift in position can leave it more and more exposed to an indefiniteness challenge. In a dispute over waterproof housings for portable electronic devices, Judge Alsup decided that plaintiff Aquatic AV had crossed the line, noting the "cascade of ever-changing meanings that . . . introduces the very imprecision Section 112 prohibits." Applying the Supreme Court's 2014 Nautilus decision, which held claims invalid if they "fail to inform, with reasonable certainty, those skilled in the art," Judge Alsup granted summary judgment that the asserted claim is invalid as indefinite.
Defendants had moved for summary judgment of non-infringement and/or invalidity of claims in one of two asserted patents. Those issues depended on the construction of certain terms.
The first term at issue was "hermetically seals." Judge Alsup began his analysis by noting, "[i]t would serve our patentee right, as the drafter, to hold that 'hermetically seals' means what every American ordinarily thinks it means — namely, airtight." Under such a construction, the accused products would not infringe. The intrinsic evidence, the court found, suggested that "hermetically seals" at least meant a "waterproof" enclosure. Aquatic AV's expert, however, argued that the term did not have a single accepted meaning, but instead had "different meanings depending upon the application." Accordingly, Aquatic AV argued that "waterproof" should be understood as a degree of water resistance, as defined in the IP Codes (which range from IPX0 to IPX8). Aquatic AV initially submitted evidence that the accused products passed IPX4 and possibly IPX5. Then, after defendants' indefiniteness attack, Aquatic AV argued that "waterproof" meant "marine grade watertight" under Coast Guard regulations, which referenced IPX6.
Instead of construing the term or ruling on the non-infringement issue, Judge Alsup found the asserted independent claim invalid as indefinite, "taking our patentee at its word that 'hermetically seals' has no fixed meaning." He also noted the need for a "definiteness" check to prevent patent applicants from injecting ambiguity into their claims. Notably, even though the IP Codes had existed at the time of the application, neither the specification nor the prosecution history mentioned "water resistant", "watertight", "IPX", "IP Code", or any of the other standards Aquatic AV now cited in litigation.
As a second and independent ground for resolving defendants' motion, Judge Alsup found that the accused products did not satisfy the requirement of a user interface that "detachably couples" from the housing unit. The accused products used a wireless connection. The patent, however, described only physical coupling methods, such as flip up or flip down designs. Thus, Judge Alsup found that the asserted claims could not be read onto wireless remote controls.
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