In Re: Walter , 698 F. App'x 1022 ( 2017 )

NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: DAVID WALTER,
Appellant
______________________
2016-2256
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 90/013,165.
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Decided: August 21, 2017
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STEVEN J. MILLER, The Miller Law Offices PLC,
Miami, FL, and MARK TERRY, Office of Mark Terry, Mi-
ami, FL, argued for appellant.
PHILIP J. WARRICK, Office of the Solicitor, United
States Patent and Trademark Office, Alexandria, VA,
argued for appellee Joseph Matal. Also represented by
NATHAN K. KELLEY, THOMAS W. KRAUSE, JOSEPH GERARD
PICCOLO, COKE MORGAN STEWART.
______________________
Before MOORE, SCHALL, and O’MALLEY, Circuit Judges.
SCHALL, Circuit Judge.
2 IN RE: WALTER
DECISION
David Walter appeals the decision of the Patent Trial
and Appeal Board (“Board”) in an ex parte reexamination
proceeding involving U.S. Patent No. 7,513,711 (“the ’711
patent”). See Ex parte David Walter, No. 2015-006121,
2015 WL 5144184 (P.T.A.B. Aug. 31, 2015). In its deci-
sion, the Board ruled that all twelve claims of the ’711
patent lack adequate written description and are indefi-
nite under 35 U.S.C. § 112. Id. at *2–3. We affirm.
DISCUSSION
I. Background
Mr. Walter is the sole inventor of the invention
claimed in the ’711 patent. See ’711 patent at [76]. The
invention relates to artificial reefs for cultivating marine
life. Id., col. 1 ll. 8–16. The reefs 10 generally comprise
concrete walls 16 joined together to form a hollow interior.
Id., Abstract. The walls 16 contain stones 14 for support-
ing aquatic lifeforms:
Id., Figs. 3, 4. The concrete walls 16 attach to an under-
lying “support structure” 12 having a base 22 and up-
wardly-extending “frame members.” Id., col. 1 ll. 36–39,
Fig. 2. According to the patent, the reef can take any
shape, including pyramidal, prismatic, and cylindrical
arrangements. Id., col. 1 ll. 49–51, col. 3 ll. 52–54, Figs. 2,
5, 7. The ’711 patent originally issued with twelve claims,
IN RE: WALTER 3
one independent claim and eleven dependent claims. Id.,col. 4 ll. 26–64. The claims largely embody the foregoing
features.
The Patent and Trademark Office began reexamining
the ’711 patent in 2014 at Mr. Walter’s request. In those
proceedings, the examiner initially rejected the issued
claims as obvious over various prior art references. See
J.A. 124–27. Mr. Walter responded by amending inde-
pendent claim 1 to recite, inter alia, that the reef’s
claimed “support structure” was “block-like.” See
J.A. 154–55. Relying on an expert declaration from
Steven J. Miller, see J.A. 178, Mr. Walter argued that the
plain and ordinary meaning of “block-like” is a “solid
support structure made up of discreet [sic] pieces or
‘blocks’ which[,] when joined together in some manner,
assemble into a complete structure or apparatus.”
J.A. 164. Armed with this construction, Mr. Walter urged
that the examiner’s prior art references did not teach a
“block-like support structure,” as so construed. See
J.A. 164–65. The text of amended claim 1 reads in full:
1. An artificial reef comprising:
a) a block-like support structure made of a plurali-
ty of frame members forming a base and
frame members extending up from said base;
b) attachable slab walls fabricated of a concrete
material secured to said support structure
forming a hollow interior, said walls having
recesses to provide access into the hollow inte-
rior of said reef; and
c) a plurality of soft stones embedded into said
concrete walls, said soft stones are elevated
beyond the face of said concrete walls to pro-
vide a greater surface area for marine life to
bore and anchor into.
J.A. 24 (emphasis added).
4 IN RE: WALTER
Mr. Walter’s amendment did not persuade the exam-
iner. In his ensuing office action, the examiner main-
tained his obviousness rejections. J.A. 213–16. He also
rejected the newly-amended claims as lacking adequate
written description support and as indefinite. Id. As for
the written description rejection, the examiner reasoned
that the specification did not disclose a support structure
that was “block-like.” Id. Turning to indefiniteness, the
examiner determined that the term “block-like” lacked
reasonable certainty because Mr. Walter’s proposed
construction conflicted with the dictionary meaning of the
term “block.” Id. Citing to an internet dictionary, the
examiner construed “block” to mean “a solid piece of
material . . . that has flat sides and is usually square or
rectangular in shape.” Id. (emphasis added). Because the
claimed “support structure” did not contain flat sides, the
examiner reasoned, it could not be fairly described as
“block-like.” Mr. Walter disagreed with the examiner’s
findings and appealed the rejections to the Board.
J.A. 397.
II. Proceedings Before the Board
Mr. Walter’s opening brief to the Board challenged the
examiner’s rejections. On the issue of indefiniteness,
Mr. Walter pointed to places in the specification where he
believed one of ordinary skill could have ascertained the
meaning of “block-like.” J.A. 401–02. Mr. Walter also
urged that his amended claims were consistent with the
examiner’s dictionary definition of “block.” In
Mr. Walter’s view, the claimed “support structure” was
“block-like” because the individual frame elements com-
prising the support structure—not the support structure
itself—were “3-dimensional cuboid[s]” with “flat sides.”
J.A. 402. Mr. Walter did not rely on the construction of
“block-like” that he had presented with his initial
amendment based on the Miller declaration. Turning to
the other rejections, Mr. Walter asserted that the examin-
IN RE: WALTER 5
er erred in his findings on obviousness and written de-
scription.
The examiner responded by reaffirming his construc-
tion of “block” and maintaining that a block must contain
“flat sides.” J.A. 452. Because the claimed support struc-
ture comprised wholly open faces without a flat side, the
examiner concluded, the “block-like” term was indefinite
because the amended claims used the term in a way
contrary to its plain meaning. Id. The examiner was not
persuaded by Mr. Walter’s “3-dimensional cuboid” argu-
ment because, in the examiner’s view, the ’711 patent
disclosed embodiments with noncuboid frame members.
J.A. 458. Finally, the examiner observed that “block-like”
is a term of degree, without objective criteria in the pa-
tent’s intrinsic record for establishing the scope of the
limitation. J.A. 458–59. The examiner also defended his
remaining rejections.
In his reply, Mr. Walter continued to allege that the
individual “frame elements” of the support structure
satisfied the examiner’s construction of “block.” J.A. 482–
83. According to Mr. Walter, the examiner’s construction
encompassed noncuboid frame elements because blocks
“usually” take cuboid form but need not do so in every
case. Id. In Mr. Walter’s view, this understanding com-
ported with the specification of the ’711 patent, which
depicted reefs taking a variety of shapes. Id. Once again,
Mr. Walter did not refer to his initial construction of
“block-like” submitted with Mr. Miller’s declaration. Id.The Board heard arguments on these issues on Au-
gust 20, 2015. During the hearing, the Board inquired
into the meaning of “block-like.” Mr. Walter responded in
a variety of ways. At first, Mr. Walter urged a construc-
tion of “block-like” similar to the one he proposed in his
initial amendment—namely, that “block-like” meant
“discrete pieces that have been put together for the pur-
poses of providing support.” J.A. 509 ll. 18–20. When
6 IN RE: WALTER
pressed on this construction, however, Mr. Walter altered
his position and advanced the “cuboid” construction he
had raised in his briefing. In particular, Mr. Walter
urged a construction that “each one of [the individual]
frame members is a block-like structure” because they are
“cuboid-shaped.” J.A. 511 ll. 12–17. When the Board
asked Mr. Walter to clarify this position, he returned to
his original stance that “block-like” is synonymous with
“discrete.” See J.A. 512–13.
Confronted with these arguments, the Board ruled
that the term “block-like” is indefinite. Ex parte Walter,
2015 WL 5144184, at *2–3. According to the Board,
“block-like” lacks reasonable clarity because the specifica-
tion of the ’711 patent uses the term in a manner “incon-
sistent with a proper understanding” of the word “block.”
Id. at *2. The Board also rejected Mr. Walter’s argument
that “block-like” referred to the individual “frame mem-
bers,” rather than the “support structure” as a whole. Id.
at *3. As the Board reasoned, the claims recited a “block-
like support structure made of a plurality of frame mem-
bers,” not a “support structure made of a plurality of
block-like frame members.” Id. (emphases added). The
Board also affirmed the examiner’s written description
rejection and pro forma reversed the obviousness rejection
on the grounds that it could not ascertain the meaning of
the amended claims. Id. at *2–3.
Mr. Walter asked the Board to reconsider its decision,
but the Board denied the request. See J.A. 4. In addition
to reaffirming its prior findings on indefiniteness, the
Board held that “block-like” is indefinite for the additional
reason that it is a term of degree without sufficient guid-
ance delimiting its scope. J.A. 3–4.
Mr. Walter timely appealed the Board’s decision. We
have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
IN RE: WALTER 7
III. Standard of Review
The Board construes claims of an unexpired patent
during reexamination proceedings under the “broadest
reasonable construction.” In re CSB-Sys. Int’l, Inc., 832
F.3d 1335, 1340 (Fed. Cir. 2016) (citing In re NTP, Inc.,
654 F.3d 1268, 1274 (Fed. Cir. 2011)). We review the
Board’s ultimate claim construction de novo. Id. (citing
Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831,
840–41 (2015)). When the intrinsic record dictates the
proper construction of a term, we review the Board’s
construction without deference. Wasica Fin. GmbH v.
Cont’l Auto. Sys., Inc., 853 F.3d 1272, 1278 (Fed. Cir.
2017) (citing Microsoft Corp. v. Proxyconn, Inc., 789 F.3d
1292, 1297 (Fed. Cir. 2015)).
Indefiniteness is a question of law this court reviews
de novo. Biosig Instruments, Inc. v. Nautilus, Inc., 783
F.3d 1374, 1377 (Fed. Cir. 2015) (citing Interval Licensing
LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014)).
Compliance with the written description requirement
is a question of fact we review for substantial evidence.
ULF Bamberg v. Dalvey, 815 F.3d 793, 797 (Fed. Cir.
2016) (citing Harari v. Lee, 656 F.3d 1331, 1341 (Fed. Cir.
2011)). Substantial evidence justifies a finding if a rea-
sonable mind might accept the evidence to support it.
Consol. Edison Co. v. NLRB, 305 U.S. 197, 229 (1938).
IV. Analysis
A.
Mr. Walter has advanced several arguments on ap-
peal. In his opening brief, he asserted that he acted as his
own lexicographer and defined the term “block-like”
during reexamination. See Appellant’s Br. 15, 21, 23.
Mr. Walter did not raise this argument before the Board,
however, and expressly abandoned and disavowed it
during oral argument before us. See Oral Argument at
3:24–4:18, 10:03–10:26 (No. 16-2256), http://
8 IN RE: WALTER
oralarguments.cafc.uscourts.gov/default.aspx?fl=2016-
2256.mp3. We therefore deem this argument waived.
Although Mr. Walter no longer relies on the Miller
declaration as supporting his lexicography argument, he
does contend that the declaration establishes how one of
ordinary skill in the art would understand the term
“block-like.” Appellant’s Br. 17–18, 23. In Mr. Walter’s
view, “block-like” is a term of art in the relevant field, and
the Board erred by failing to credit Mr. Miller’s testimony
on this point. Id.B.
On the record before us, we agree with the Board that
the term “block-like” is indefinite. We therefore affirm
the decision of the Board.
At the outset, we decline to adopt the Board’s implicit
determination that a patent claim is indefinite because
the specification uses a term differently from its diction-
ary definition. See Ex parte Walter, 2015 WL 5144184, at
*2. The specification is “always highly relevant to the
claim construction analysis. Usually, it is dispositive.”
Phillips v. AWH Corp., 415 F.3d 1303, 1315 (Fed. Cir.
2005) (en banc) (internal quotation marks omitted) (quot-
ing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
1582 (Fed. Cir. 1996)). If there is a conflict between the
specification and a general purpose dictionary as to a
claim’s proper meaning, the specification controls. Id. at
1318–24.
Nevertheless, we agree that the term “block-like” ren-
ders Mr. Walter’s claims indefinite in this case. A claim is
indefinite under 35 U.S.C. § 112 when the intrinsic record
of the patent “fail[s] to inform, with reasonable certainty,
those skilled in the art about the scope of the invention.”
Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120,
2124 (2014) (“Nautilus I”). If a claim employs a term of
degree, the intrinsic record must provide those skilled in
IN RE: WALTER 9
the art with “objective boundaries” with which to assess
the term’s scope. Interval Licensing, 766 F.3d at 1371. If
it does not, the claim is indefinite. Id.
Here, “block-like” is a term of degree without any ac-
companying guidance in the intrinsic record for determin-
ing its scope. The term ostensibly covers a range of
shapes that are sufficiently “like” a “block” and excludes
those that are not. But nothing in the intrinsic record
offers “objective boundaries” for ascertaining whether a
given shape falls into either category. See Interval Licens-
ing, 766 F.3d at 1371. And because the “present inven-
tion 10 can be fabricated in any shape without deviating
from the objectives thereof,” see ’711 patent, col. 3 ll. 52–
54 (emphasis added), determining whether a particular
shape is “block-like” thus strikes us as devolving into a
highly subjective inquiry depending “on the unpredictable
vagaries of any one person’s opinion.” Interval Licensing,
766 F.3d at 1371 (quoting Datamize, LLC v. Plumtree
Software, Inc., 417 F.3d 1342, 1350 (Fed. Cir. 2005)).
When, as here, “nothing in the specification, prosecution
history, or proper art provides any indication as to what
range of [structures] is covered by the term,” the claim is
indefinite. Amgen, Inc. v. Chugai Pharm. Co., Ltd. 927
F.3d 1200, 1218 (Fed. Cir. 1991).
The prosecution history compounds this uncertainty,
describing “block-like” in different and often inconsistent
ways. During reexamination, for example, Mr. Walter
asserted that the term meant having “discreet [sic] pieces
conjoined . . . in some manner,” J.A. 164, having “3-
dimensional cuboid elements,” J.A. 402, having “solid
pieces of material with flat sides,” J.A. 244, and encom-
passing “curved blocks,” J.A. 482, among other formula-
tions. Mr. Walter also vacillated between applying the
“block-like” adjectival phrase to the individual “frame
members,” see J.A. 511 ll. 12–17, and other times to the
“support structure” as a whole, see J.A. 164. These shift-
ing positions make pinning down a construction of “block-
10 IN RE: WALTER
like” all the more elusive. And even if it were possible to
harmonize all of Mr. Walter’s statements, it is not enough
“that a court can ascribe some meaning to a patent’s
claims; the definiteness inquiry trains on the understand-
ing of a skilled artisan at the time of the patent applica-
tion, not that of a court viewing matters post hoc.”
Nautilus I, 134 S. Ct. at 2130. Here, the term’s ill-defined
boundaries coupled with the patentee’s erratic use of the
term fails to inform skilled artisans about the scope of the
invention with reasonable certainty. Id. at 2124. The
term is indefinite.
Citing to Mr. Miller’s expert declaration, Mr. Walter
urges that “block-like” is a term of art in the structural
engineering field. Appellant’s Br. 12, 17–18, 23. We are
not persuaded by this argument. First, Mr. Miller does
not support his opinion with evidence or analysis, and his
testimony is wholly conclusory. See J.A. 178 ¶ 6.
“[C]onclusory, unsupported assertions by experts as to the
definition of a claim term are not useful to a court,” Phil-
lips, 415 F.3d at 1318, and thus we give Mr. Miller’s
testimony no weight. See SkinMedica, Inc. v. Histogen
Inc., 727 F.3d 1187, 1210 (Fed. Cir. 2013) (giving “no
weight” to expert testimony in similar circumstances).
Second, it is difficult to fault the Board for purportedly
overlooking Mr. Miller’s declaration when Mr. Walter
never relied on it. In both his opening and reply briefs to
the Board, Mr. Walter argued that the claims were con-
sistent with the examiner’s construction of “block” and did
not urge that the phrase implicated a term of art. See
J.A. 401–02, 482–83. Nor did Mr. Walter rely on
Mr. Miller’s declaration during the oral hearing before the
Board. See J.A. 509–13. We therefore see no error in the
Board’s decision to disregard Mr. Miller’s testimony.
For the foregoing reasons, we hold that amended in-
dependent claim 1 of the ’711 patent is indefinite.
Mr. Walter does not separately argue the definiteness of
dependent claims 2–12, and thus we hold those claims to
IN RE: WALTER 11
be indefinite as well. See Soverain Software LLC v.
Newegg Inc., 728 F.3d 1332, 1335–36 (Fed. Cir. 2013)
(“[P]recedent guides that absent some effort at distinction,
the claims rise or fall together.”); SIBIA Neurosciences,
Inc. v. Cadus Pharm. Corp., 225 F.3d 1349, 1359 (Fed.
Cir. 2000). Having determined that claims 1–12 of the
’711 patent, as amended, are indefinite, we do not reach
the issue of whether they are also unpatentable for failing
to comply with the written description requirement under
35 U.S.C. § 112, first paragraph.
CONCLUSION
For the foregoing reasons, we hold that claims 1–12 of
the ’711 patent, as amended during reexamination, are
indefinite. We therefore affirm the Board’s decision
finding the claims unpatentable on that ground. In light
of this holding, we do not reach the Board’s decision on
written description.
AFFIRMED
COSTS
Each party shall bear its own costs.