FEDERAL CIRCUIT HOLDS CLAIM RECITING A CAPACITANCE “CAPABLE OF BEING DETERMINED BY MEASUREMENT” TO BE DEFINITE

PRESIDIO COMPONENTS, INC. v. AMERICAN TECHNICAL CERAMICS CORP.,  Appeal Nos. 2016-2607, 2016-2650 (Fed. Cir. November 21, 2017).  Before Dyk, Moore, and Taranto.  Appealed from S.D. Cal. (Judge Huff).  (Indefiniteness; Intervening Rights)
Background:

Presidio sued American Technical Ceramics Corp. (“ATC”) for infringement of the ‘356 patent, directed to a multilayer integrated network of capacitors.  While the suit was pending, ATC successfully sought ex parte reexamination. During reexamination, Presidio amended claim 1 to recite, in the relevant portion, contacts sufficiently close “in an edge to edge relationship in such proximity as to form a first fringe-effect capacitance… that is capable of being determined by measurement in terms of a standard unit.”  Presidio amended its infringement complaint in view of the amended claims.  The district court granted ATC’s motion for summary judgment on the affirmative defense of absolute intervening rights.  In a subsequent jury trial, the jury found infringement of all asserted claims.  The court rejected ATC’s contention that the claims of the ‘356 patent were invalid for indefiniteness.

Issues/Holdings:
  1. Are the claims of the ‘356 patent invalid for indefiniteness?
  2. Did the amendment to claim 1 during reexamination entitle ATC to absolute intervening rights? (continue reading)

Summary by:  Donald Raymond

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