Judge DeArcy Hall Finds Asserted Claims Indefinite Because “Absorbing” Heat via an Endothermic Chemical Reaction Cannot Mean “Releasing” Heat
On February 24, 2022, Judge LaShann DeArcy Hall found patent claims directed to pressure-activated self-cooling mats for pets to be invalid as indefinite in a case filed by The Green Pet Shop Enterprises LLC against Fine Promotions. Judge Hall focused on two claim terms: “predefined distance” and “endothermically deactivated.”
With respect to the first term, Judge DeArcy Hall found that the “ordinary and customary meaning” of “predefined distance” as an “established distance” is “readily apparent” and consistent with cited dictionary definitions, prior constructions of this term, and expert testimony. In addition, the Court found no ambiguity in the fact that the specifications stated a predefined distance “can ‘be measured’ but also ‘equal zero,’” and held that “nothing about the challenged term ‘predefined distance’ is subjective” or “dependent upon individual preferences or circumstances,” such that the term would be indefinite.
However, the Court reached the opposite conclusion with respect to the term “endothermically deactivated.” The asserted claims “require a pressure activated recharging cooling composition that is ‘endothermically activated and endothermically deactivated upon the application and release of pressure, respectively.’” The Court found that “endothermically deactivated” cannot mean “releases or emits heat” as urged by the patentee because such a construction is contradicted by the dictionary definition of “endothermic” as “of or relating to a chemical reaction during which there is absorption of heat” (emphasis added). In view of this definition, the Court ruled it was “axiomatic” that the term “endothermically” cannot mean both “absorbing” and “releasing” heat. The Court also noted that the “subsequent prosecution history” of claims in a related patent application confirmed the applicant did not intend “endothermically deactivated” to refer to “the release of heat.” As such, Judge DeArcy Hall found the asserted patent claims to be invalid as indefinite.