North Atlantic Imports, LLC v. A&J Manufacturing, LLC, Civil Action No. 1:22-cv-02436-VMC, Dkt. 45 (N.D. Ga., July 3, 2023)

Judge Victoria Calvert construed two claim terms for a patent directed to outdoor grilling. The Order in the Northern District of Georgia stems from a dispute between North Atlantic Imports, LLC (“NAI”) and A&J Manufacturing, LLC (“A&J”). NAI filed a complaint last summer for trademark infringement and patent infringement against A&J. Dkt. 1 at ¶ 1. The asserted patent and trademark relate to NAI’s brand, BLACKSTONE, which markets griddles for outdoor cooking. Dkt. 1 at ¶ 11. On July 3, 2023, Judge Victoria M Calvert delivered a claim construction order for two disputed terms in US Patent No. 11,116,361 (“the ‘361 Patent”) entitled “Outdoor Cooking Station, Side Shelf, and Method Thereof.” The disputed terms were “set-back” and “heat zone.” Dkt. 45 at 7. The terms are used in six claims of the ‘361 Patent (Claims 2-4, 9-10, 12). For example, Claim 10 reads:

“The outdoor cooking station of claim 9, wherein the upstanding elongated ridge and the elongated opening extend longitudinally adjacent the one of the first and second sides of the main body so as to define a set-back from the heat zone for placement of objects on the upward facing flat surface of the side shelf.”

Dkt. 1-1 at 13.

Defendant, A&J Manufacturing, argues that both terms are indefinite. Dkt. 45 at 9. Defendants assert that “set-back” is a subjective term of degree with no guidance as to the length of the set-back other than the suggestion in the specification that the set-back is a safety feature to keep objects away from the griddle. Id. at 11. Furthermore, different objects have different safe distances away from the heat zone (metal tongs vs flammable oil), so the set-back distance cannot be determined and is indefinite. Id. Next, Defendants argue “heat zone” is entirely subjective and the boundaries are undefined. Id. at 11-12. A&J asserts that the boundaries of the heat zone are essential to determine where to place the elongated ridge. Id. at 11-12. Therefore, Defendants argue that a POSITA could ascertain the scope of the invention with reasonable certainty, so the claims using the terms are indefinite.

Plaintiff responds that “a POSITA would be able to ascertain with reasonable certainty if an elongated ridge remained in the heat zone and thus was outside the scope of the claims.” Id. at 12. Plaintiff adds: “a POSITA would understand the safety concern encompasses a variety of dangers arising from placement of objects in a heat zone, all of which are prevented by the claimed upstanding elongated ridge.” Id. (internal quotations omitted).

In the Order, Judge Calvert found that Defendants have not presented clear and convincing evidence that a POSITA would be unable to determine the boundaries of the heat zone or appropriate size of the set-back with reasonable certainty. Id. at 13. The Court agreed with the Plaintiff’s arguments and “gives weight to the fact that, as noted by [Plaintiff], there were no issues raised with these terms during the prosecution process.” Id. at 14. The Order relies on a case with a similar dispute over a term measuring degree. Sonix Tech. Co. v. Publ’ns Int’l, Ltd., 844 F.3d 1370, 1378 (Fed. Cir. 2017) (holding that the term “visually negligible” is definite because a POSITA would understand the objective baseline of the term measuring degree is what can be seen by the normal human eye, and this provides a reasonable objective boundary to the claim).  In her ruling, Judge Calvert specifically noted that the law allows some uncertainty to remain in the terms because “mathematical precision” is not required for definiteness. Id. at 15 (citing Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339, 1347 (Fed. Cir. 2022)). “Some variation does not mean a POSITA, relying on normal human senses, could not determine the boundaries of the heat zone, and therefore the size of the set-back to the required level of certainty.” Id. at 14-15. Therefore, the Order construes the terms “heat zone” and “set-back” as not indefinite and requires no construction. Id. at 15.