Federal Circuit, September 10, 2014, 2013-1282, -1283, -1284, -1285

In a recent Supreme Court decision in June, 2014, Nautilus v. Biosig, 134 S.Ct. 2120, the Supreme Court defined a standard for indefiniteness under 35 USC 112(b) stating that a patent is invalid if its claims, when read in light of the specification, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.

Interval is a Federal Circuit decision post-Nautilus that provides additional guidance regarding indefiniteness when it comes to "words of degree" in a claim. The two patents at issue were directed to a device for occupying the peripheral attention of a person that is within the vicinity of a display. The phrase in the claims that was at issue is displaying an image "in an unobtrusive manner that does not distract a user." The Federal Circuit viewed this feature as a term of degree because what is unobtrusive and distracting is subjective to a particular user.

In rendering its decision, the Federal Circuit made it a point to indicate that subjective language in a claim is not necessarily indefinite as long as there is enough objective certainty as to the feature in the specification or the prosecution history. However, in this case Interval's specification referred to two different types of images which were unobtrusive and not a distraction to a person. The first was a screen saver that would pop up after a period of inactivity, and the second was a background image that they referred to as wallpaper which was displayed to the side of a main window being viewed by a person. The Court also noted that there was nothing in the prosecution history that objectively defined the feature.

In their secondary argument, Interval argued for a narrow interpretation of the claims based on a paragraph from the Summary which stated that the unobtrusive manner was "e.g." the wallpaper embodiment. This argument, however, also failed because the Court pointed out that the term "e.g." when literally translated means "for example." The Court hinted at, but didn't say for sure, if the term "i.e." ("that is") were used instead of "e.g." their decision might have been different.