“A Hole” Can Refer to Multiple Holes
Eidos Display, LLC v. AU Optronics Corp.
Addressing indefiniteness in a post-Nautilus world, the U.S. Court of Appeals for the Federal Circuit concluded that the claim limitation “a contact hole” could refer to multiple, separate contact holes and was not indefinite under the “reasonable certainty” standard at Nautilus.Eidos Display, LLC v. AU Optronics Corp., Case No. 2014-1254 (Fed. Cir., Mar., 10, 2015) (Chen, C.J.).
Eidos accused various electronic display manufacturers (the display manufacturers) of infringing its patent directed to manufacturing an electro-optical device, such as a liquid crystal display (LCD). After the Markman phase, the district court granted the display manufacturers’ motion for summary judgment that the claim limitation “a contact hole for source wiring and gate wiring connection terminals” was indefinite. Eidos argued that this “contact hole” limitation required multiple holes. In contrast, the display manufacturers argued that a plain reading required one shared hole. The district court decided that a person of ordinary skill in the art could not determine whether this claim limitation required only one or multiple contact holes and was therefore indefinite. Eidos appealed.
In reversing the district court and finding that the “contact hole” limitation was not indefinite, the Federal Circuit offered an analogy. The limitation was similar to the sentence “I am going to create an electric car for the United States and the United Kingdom.” People knowledgeable about cars would likely interpret this sentence to mean that at least two cars would be created, the U.S. car having its steering wheel on the left, and the U.K. car having its steering wheel on the right. Similarly, a person having ordinary skill in the art would interpret “a contact hole for source wiring and gate wiring connection terminals” to describe at least two separate holes, one contact hole for source wiring connection terminals, and one contact hole for gate wiring connection terminals.
The Federal Circuit found the analogy apt for two reasons. First, it was well known that the standard procedure in LCD manufacturing was to create multiple, separate contact holes. According to the Federal Circuit, “[i]f the patentee wanted to deviate from the standard practice and claim a novel shared contact hole, some teaching of how to depart from the common practice would not only be expected, but is required” for purpose of satisfying the written description requirement. Here, nothing in the specification taught one of ordinary skill in the art how to deviate from the standard “multi-hole” procedure.
Second, the “multiple hole” interpretation found support in the specification and file history. Specifically, during prosecution of the parent application, the claims of the parent application were subject to a restriction requirement. There is no dispute in the record that claims directed to certain unelected embodiments contained the same “a contact hole” limitation, but covered embodiments with multiple holes. The Federal Circuit saw no need to ascribe two different meanings to the same limitation in the patent family, explaining that “claim terms are normally used consistently throughout the patent.”
The display manufacturers also argued that reading the subject limitation in a way that covers multiple holes would amount to an impermissible rewriting of the claims. But the Federal Circuit disagreed, explaining that it was simply interpreting what was originally written. The “contact hole” limitation was not indefinite because one having ordinary skill in the art would understand “with reasonable certainty” that the limitation could cover multiple holes.