Orthokinetics Inc. v. Safety Travel Chairs, Inc.
806 F.2d 1565 (Fed. Cir. 1986)
Orthokinetics made pediatric
wheelchairs. They invented and received a patent on a wheelchair
improvement that made it easy to load people into and out of cars.
Specifically, the patent
claimed "wherein said front leg portion is so dimensioned as to be
insertable through the space between the doorframe of an automobile and
one of the seats thereof." The claim did not specify any range of
sizes that would fit into a car, or suggest what size range of cars the
invention was designed to be used with.
A few years later, STC started
marketing a similar kind of wheelchair. Orthokinetics sued for infringement.
STC argued that Orthokinetics'
patent was invalid because it did not "particularly point out and
distinctly claim the invention," as required by 35 U.S.C. §112 ¶2.
STC argued that the
dimensions of the wheelchair would be dependent on the dimensions of the
car that the wheelchair is built for. Since the dimensions of the car
are not part of the patent, it would impossible for someone reading the
patent to figure out how to make a properly-sized wheelchair.
Orthokinetics argued that it
was pretty obvious that you had to measure the car to properly size the
wheelchair and that someone skilled in the art would be able to do that
without having to have it explicitly spelled out in the patent.
The Trial Court found for STC
in a JNOV. Orthokinetics appealed.
The Trial Court found that
Orthokinetics' claim did not describe the invention in "full, clear,
concise, and exact" terms. Therefore the patent is invalid due to indefiniteness.
notwithstanding the verdict) means that the jury found for Orthokinetics,
but the judge thought that the jury made such a horrible mistake, he
ignored the jury's verdict.
The Appellate Court reversed
The Appellate Court found
that the Trial Court had erred when they discounted Orthokinetics' expert
witness' testimony that someone skilled in the art would know how to
measure the car.
The test for definitiveness is
not whether there is a better, more specific way to have drafted the
claim. The test is simply whether it is definitive enough so that someone
skilled in the art could figure it out.