CALL US: 206.533.3854
CALL US  206.533.3854
AEON Law logo full color transparent

Federal Circuit Reverses Patent Rejection for Indefiniteness

Federal Circuit
reverses district court on

The Federal Circuit has reversed a district court’s ruling that a patent’s claims were indefinite and thus that the patent was invalid.

Sonix Tech. Co., Ltd. v. Publ’ns Int’l, Ltd. is a case involving Sonix’s patent for a system and method for using a “graphical indicator” (e.g., a matrix of small dots) to encode information on the surface of an object.

The dots can be arranged in a matrix, and each cell in the matrix either contains or doesn’t contain a dot, “resulting in a unique pattern that can store information.”

For example, the system can be used with an optical device to “read” information in a children’s book.

The Federal Circuit noted that

Of course, encoding information on the surface of an object is not new. The ’845 patent admits that information has been recorded on the surface of objects “[d]ating back to ancient time[s],” and lists a bar code as a “conventional” example of a graphical indicator, … The ’845 patent purports to improve on conventional methods by rendering the graphical indicator “visually negligible.”

In 2010, Sonix claimed that children’s books using dot patterns produced by GeneralPlus, a Taiwanese company, infringed the ’845 patent. In response, the defendant’s parent company requested an ex parte reexamination of the patent.

The case turned on whether the phrase “visually negligible” was indefinite, because “it depends on the visual acuity of the observer.’”

The district court

rejected Sonix’s argument that “visually negligible” means “something that may be visible, but does not interfere with the user’s perception of other visual information on a surface,” concluding that defining the term “as reliant on the user’s perception provides no objective standard by which to measure the scope of the term—the user’s perception becomes the measure and this is insufficient.”

However, the Federal Circuit agreed with Sonix that

a skilled artisan would understand, with reasonable certainty, what it means for an indicator in the claimed invention to be “visually negligible.”

The Federal Circuit noted that:

Because language is limited, we have rejected the proposition that claims involving terms of degree are inherently indefinite. Thus, “a patentee need not define his invention with mathematical precision in order to comply with the definiteness requirement.”

Related Articles

Patent Office Updates Eligibility Guidance on AI Inventions

The US Patent and Trademark Office (USPTO) has updated its Subject Matter Eligibility Guidance to address artificial intelligence (AI) and other emerging technologies. This is in response ...
Read More

Federal Circuit Invalidates Remote Gambling Patents

The Federal Circuit has affirmed a federal district court’s dismissal of patent infringement suits involving patents for remote gambling, because it found the subject matter ...
Read More

Federal Circuit Rules on Patent Damages Based on Foreign Conduct

The Federal Circuit has ruled that a US patent-holder plaintiff may be able to recover damages for a defendant’s foreign sales of infringing products if ...
Read More

Let's work together.

Contact us to set up a meeting with an attorney or team member.

Stay Informed

Sign up to receive Patent Poetry—a monthly roundup of key IP issues in our signature haiku format. Four articles (only 68 syllables); zero hassle.



Artificial Intelligence

Blockchain & Cryptocurrency

Computer Technology & Software

Consumer Electronics

Electrical Devices



Mechanical Devices

Consumer & Retail Products

Hardware & Tools

Toys & Games



Chemical Compounds

Digital Health

Healthcare Products



Books & Publications

Brand Creation

Luxury Products

Photography & Video

Product Design

call us  206.533.3854