Energizer Holdings, Inc. And Eveready Battery Company, Inc. v. International Trade Commission, and Pt International Chemical Industrial Co. Ltd., Intervenor, and Golden Power Industries, Ltd., Guangdong Chaoan Zhenglong Enterprise Co., Ltd., Guangzhou Tiger Head Battery Group Co., Ltd., Fujian Nanping Nanfu Battery Co., Ltd., Hi-Watt Battery Industry Co., Ltd., Ningbo Baowang Battery Co., Ltd., Sichuan Changhong Electric Co., Ltd., Zhejiang 3-Turn Battery Co., Ltd., and Zhongyin (Ningbo) Battery Co., Ltd., Intervenors

Citations: 435 F.3d 1366; 77 U.S.P.Q. 2d (BNA) 1625; 2006 U.S. App. LEXIS 1760Docket: 05-1018

Court: Court of Appeals for the Federal Circuit; January 24, 2006; Federal Appellate Court

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Energizer Holdings, Inc. and Eveready Battery Company, Inc. (EBC) appeal a ruling from the International Trade Commission, which invalidated all claims of EBC's U.S. Patent No. 5,464,709 (the '709 Patent) under 35 U.S.C. § 112. The Federal Circuit Court, led by Judge Pauline Newman, reversed the invalidity ruling and remanded the case for further proceedings. The '709 Patent pertains to an electrolytic alkaline battery cell that is largely free of mercury, addressing the environmental concerns associated with mercury in batteries. The patent claims the discovery that trace impurities in zinc anodes cause gas-producing corrosion, which can lead to battery leakage. By eliminating these impurities, the need for mercury as a corrosion inhibitor is significantly reduced. EBC alleged violations of 19 U.S.C. § 1337 due to the importation and sale of batteries by certain respondents that purportedly infringed the '709 Patent.

The Administrative Law Judge (ALJ) initially found the patent claims valid and infringed; however, the Commission rejected the ALJ's claim construction, declaring all claims invalid for indefiniteness under 35 U.S.C. § 112.2. The Commission's ruling was based on the assertion that the term "said zinc anode" lacked antecedent basis, rendering the claims unclear. EBC contests this decision, asserting that the meaning of "said zinc anode" would be clear to professionals in the field when considered alongside the specification and that the lack of antecedent basis should not invalidate the claims. 

The review of the Commission's decision follows standards established by 19 U.S.C. § 1337(c) and the Administrative Procedure Act (APA), which maintains that factual findings are upheld unless arbitrary or unsupported, while legal rulings are reviewed for correctness. Indefiniteness analysis is closely linked to claim construction, requiring that claims be interpreted according to established claim construction principles. The Commission's determination of indefiniteness is subject to de novo review.

According to 35 U.S.C. § 112.2, patent specifications must distinctly claim the invention's subject matter. The reviewing body assesses whether an individual skilled in the field would understand the claim's scope when contextualized with the specification. Claims are not considered indefinite if their meanings can be discerned from the specification. The Commission invalidated independent claim 1 and dependent claims 2-7, emphasizing the objectionable term in claim 1, which describes an electrochemical cell with specific attributes, including the controversial "said zinc anode."

The Commission invalidated the claim due to the term "said zinc anode" lacking an antecedent basis, noting that the term does not appear before its mention in the claim. Even if "said zinc anode" were linked to "anode gel comprised of zinc," the claim remained indefinite because it ambiguously required that every cell be discharged for 161 minutes to 15% depth of discharge at 2.88A. The Commission concluded that these discharge parameters seemed applicable only to a test cell, leading to legal indefiniteness in the claim’s drafting. EBC's alternative constructions of "said zinc anode" were interpreted as admissions of indefiniteness. 

Despite these findings, EBC contended that the issues did not render the claim "insolubly ambiguous," as established in prior case law. EBC argued that a person of ordinary skill would understand the claim's intent, given that the specification clarifies that not every cell must meet the discharge requirement. The analysis of claim definiteness considers the teachings of prior art and the specification's context, focusing on whether skilled individuals can comprehend the claim's scope. 

While the Commission recognized the antecedent basis requirement as a drafting guideline, it acknowledged that failing to provide it does not automatically render a claim indefinite. This is consistent with the Manual of Patent Examining Procedure, which states that the absence of explicit antecedent basis does not always lead to indefiniteness. A cited case also affirmed that missing antecedent clauses do not prevent public understanding of the patent's limits during its lifespan.

The Slimfold court ruled that adding a missing antecedent basis during reissue does not constitute a substantive change. The determination of whether the claim regarding "said zinc anode" has a reasonably ascertainable meaning relies on context, particularly given that during the prosecution of the '709 patent, the examiner raised objections but did not cite a lack of antecedent basis as grounds for rejection. Citing Bose Corp. v. JBL, Inc., the court affirmed that claims can still be valid even without an explicit antecedent basis if their scope is reasonably discernible to those skilled in the art. Additionally, it was noted that an antecedent basis could be implied, as referenced in Slimfold and Cross Medical Products v. Medtronic. The Commission and Intervenors did not contest their understanding of the intended claim scope due to the absence of an antecedent. The Commission incorrectly concluded that the need for claim construction or alternative interpretations indicated indefiniteness; a claim that can be construed is not invalid on such grounds. The court reinforced that as long as the claim's meaning is discernible, even if challenging, it remains valid. The conclusion reached is that "anode gel" serves as the implicit antecedent for "said zinc anode," leading to the reversal of the Commission's invalidity ruling based on indefiniteness. The case is remanded for further proceedings, with no other issues of validity or infringement being considered on appeal.