Eidos Display, LLC, v. AU Optronics Corp., No. 2014-1254, 2015 U.S. App. LEXIS 3681 (Fed. Cir. Mar. 10, 2015) (Chen, J.). Click Here for a copy of the opinion.
Eidos appealed from the district court's ruling that independent claim 1 of U.S. Patent No. 5,879,958 was invalid as indefinite. The '958 patent discloses and claims a manufacturing process for an electro-optical device such as a liquid crystal display (LCD). Claim 1 of the '958 patent was directed to embodiment G as shown in the specification. The issue on appeal was whether the claim language "a contact hole for source wiring and gate wiring connection terminals" in the "fourth photolithographic step" could be construed in a way "that would allow a person of ordinary skill in the art to determine what is claimed when the claim is read in light of the specification."
Eidos argued that the disputed limitation requires separate and distinct contact holes for the connection terminals, consistent with the standard industry practice and the specification. Certain defendants ("Display Manufacturers") argued that the plain language of the disputed limitation requires a shared hole for all connection terminals. Other defendants ("Innolux") argued for a third construction requiring a contact hole for the source wiring and no hole for the gate wiring. Eidos responded with a fourth construction, which was that the contact holes could be separate or shared. The magistrate could not decide among these proposals, rejected all of them, and recommended granting Display Manufacturer's motion for summary judgment of indefiniteness. The district court granted the motion and Eidos appealed.
The Federal Circuit held that the specification and standard industry practice supported Eidos' original proposal that the claims provide separate contact holes for the source and gate wiring. The Court applied the Supreme Court's indefiniteness standard articulated in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). A claim is invalid for indefiniteness "if its language, when read in light of the specification and prosecution history, 'fail[s] to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention.'" Here, the Court reviewed the intrinsic record and concluded that someone with knowledge of LCD manufacturing would understand "a contact hole for source wiring and gate wiring connection terminals" to require "separate, different contact holes for the source wiring connection terminals and gate wiring connecting terminals," as proposed by Eidos. It was well-established in the LCD manufacturing art that such contact holes were formed separately, and there was nothing in the patent to suggest a deviation from this known practice.
Furthermore, the priority application explicitly described forming "a contact hole . . . for a source wiring connection terminal and a contact hole for a gate wiring connection terminal," i.e., separate holes. Even though different embodiments have different structures, there was nothing to suggest that these differences "impact the structure of the limitation-at-issue or impact how a person of ordinary skill in the art would have understood the limitation." The embodiments all described similar processes using a number of photolithographic steps, and the structure for the limitation at issue was formed in the same context in each embodiment.
For these reasons, the specification and prosecution history allowed with "reasonable certainty" a meaningful claim construction and the claim was not indefinite. The Federal Circuit accordingly reversed and remanded.
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