• ALJ Gildea Grants Summary Determination Of Indefiniteness In Certain Consumer Electronics With Display And Processing Capabilities (337-TA-884)
  • March 12, 2014 | Authors: Alexander B. Englehart; Eric W. Schweibenz
  • Law Firm: Oblon, Spivak, McClelland, Maier & Neustadt, L.L.P. - Alexandria Office
  • On February 27, 2014, ALJ E. James Gildea issued Order No. 53 in Certain Consumer Electronics with Display and Processing Capabilities (Inv. No. 337-TA-884).  In the Order, ALJ Gildea granted the Respondents’ motion for summary determination that the sole claim of Complainant Graphics Properties Holdings, Inc.’s (“GPH”) U.S. Patent No. 5,717,881 (the ‘881 patent) is indefinite and therefore invalid as a matter of law.

    According to the Order, Respondents argued that the claim terms “instruction decode means” and “instruction issue means” in the sole claim of the ‘881 patent are means-plus-function terms that lack sufficient corresponding structure in the ‘881 specification.  In particular, Respondents argued that the only structure disclosed in the ‘881 specification consisted of empty boxes in one figure in the specification, and that a person of ordinary skill in the art could only guess at what further structure could correspond to the claimed decode and issue functions.  Respondents also represented that the Commission Investigative Staff (“OUII”) supported a finding that the claim at issue is invalid as indefinite based on, inter alia, OUII”s prior Markman briefing.

    GPH opposed Respondents’ motion.  In particular, GPH argued that genuine issues of material fact remained such that the issue of indefiniteness needed to be reserved for the evidentiary hearing.  Moreover, GPH argued that one of ordinary skill in the art would have been able to identify the corresponding structure in the ‘881 specification for both the claimed instruction decode and instruction issue means terms.  According to the Order, in making its arguments, GPH relied in part on claim construction opinions and evidence not raised at the Markman hearing.

    After considering the arguments, ALJ Gildea determined to grant Respondents’ motion.  The ALJ noted that indefiniteness is a matter of claim construction, which is a legal question.  This meant that “the majority (if not all) of Complainant’s attempts to inject material issues of disputed fact into the claim construction discussion ... are misplaced.”  ALJ Gildea then examined the ‘881 specification and found insufficient structure corresponding to the two means-plus-function terms in dispute.  He also found that nothing in the prosecution history provided any insight into corresponding structure.  Moreover, he found that nothing in the extrinsic record showed that a person of ordinary skill in the art could have determined the corresponding structure.

    In reviewing the extrinsic evidence, ALJ Gildea noted that the parties had already had the opportunity to present evidence and arguments on claim construction at the December 18, 2013 Markman hearing.  Moreover, indefiniteness is a legal issue of claim construction.  Thus, GPH’s argument that a conflict in expert opinion on the indefiniteness issue precluded summary determination was not well taken because extrinsic evidence on the issue (e.g., expert testimony) should have been fully presented and vetted at the Markman hearing, and could not be revisited at the evidentiary hearing.

    Accordingly, ALJ Gildea found that the “instruction decode means” and “instruction issue means” are not amenable to construction, and that the sole claim of the ‘881 patent is therefore invalid as indefinite.  The ALJ thus issued an Initial Determination granting Respondents’ motion for summary determination of indefiniteness.