Indefiniteness Determined In Context Of Entire Specification

In Energizer Holdings, Inc. v. International Trade Commission , (No. 05-1018; January 25, 2006), the Federal Circuit reverses and remands the International Trade Commission's holding of invalidity for indefiniteness. The claims at issue for zero-mercury-added battery cell recite “an anode gel comprised of zinc as the active anode component, wherein … said zinc anode has gel expansion of less than 25% after being discharged for 161 minutes to 15% depth of discharge at 2.88A.” The Commission held the claims indefinite for lack of antecedent basis for the recitation of “said zinc anode” and requiring every cell to meet the specified discharge parameters, whereas the discharge parameters are intended to apply only to a test cell.

The Federal Circuit begins its analysis by recognizing that an analysis of claim definiteness “focuses on whether those skilled in the art would understand the scope of the claim when the claim is read in light of the rest of the specification.” The Federal Circuit notes that the Commission and the Intervenors did not argue that they did not understand the claim scope because of the lack of antecedent basis. Concluding that the claims are amenable to construction, the Federal Circuit holds that the claims are not invalid for indefiniteness due to the lack of antecedent basis for the zinc anode. Although not specifically addressed, the Federal Circuit appears to agree with the appellant's contention that when read in context of the specification one skilled in the art would recognize that the discharge parameters are intended to apply only to a test cell.