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Who Knows What "Most Convenient" Is? Judge Failla Rules Claims Are Indefinite

On May 11, 2018, United States District Judge Katherine Polk Failla ruled that claims 1 and 2 of U.S. Patent No. 6,340,189 (“the ’189 patent”), drawn to a device that is placed in a “position most convenient” to a user, were invalid as indefinite.

The ’189 patent is directed to a device used to assist individuals entering or exiting a vehicle.  In 2015, E. Mishan & Sons Inc. (“Defendant”) began to sell the Car Cane, which assisted with entering and exiting a vehicle.  Avenue Innovations, Inc. (“Plaintiff”), the owner of the ’189 patent, accused Defendant of patent infringement.

Judge Failla found that claims 1 and 2, which both include a limitation to mount the device to a surface so it can be placed in “at least one operative position most convenient to the user when pulling or pushing on said handle”  were invalid as indefinite.  A claim must “inform those skilled in the art about the scope of the invention with reasonable certainty.” In assessing both the intrinsic and extrinsic evidence, Judge Failla found that Plaintiff failed to define the scope of the invention.  The judge agreed with Defendant that the term is “impermissibly subjective” because different users could have different views on convenience that are not defined by objective criteria. The claim language itself was “not illuminating” because it did “little to set objective boundaries on the ‘operative position’ phrase.” The claims left a “zone of uncertainty,” which demonstrated that the claims were indefinite.

The Court looked to the specification, but found that it also did not provide a more definitive assessment of what the claims meant.  Though the specification does list factors that make a position more or less convenient, there was “no objective means of measuring what position is most convenient to any given user” and a person of ordinary skill in the art would not be able to understand with reasonable certainty how to create a non-infringing alternative.

A further analysis of the prosecution history and extrinsic evidence in the record did not benefit Plaintiff either. That a patent examiner reviewed the term and did not object to the claim as indefinite was not availing to the Court.  In addition, the Court was not persuaded by Plaintiff’s argument that Defendant’s expert did not argue indefiniteness in Defendant’s petition for inter partes review at the Patent Trial and Appeals Board.

As such, claims 1 and 2 of the ’189 patent were found invalid as being indefinite.

The case is Avenue Innovations, Inc. v. E. Mishan & Sons Inc., No. 16-cv-2086 (S.D.N.Y. May 11, 2018).