By Dennis Crouch
Nautilus v. Biosig Inst. (on petition for writ of certiorari 2013)
A major focus of attention in the current arena of patent reform is on the notice function of patent claims and, in particularly, the standard for definiteness. Most of the time, the scope of a patent's coverage is only known once a district court construes those claims. And, in many cases, that knowledge is really delayed until Federal Circuit review. A substantial portion of the blame in this area can be placed on patentees who intentionally draft claims of ambiguous scope. Of course, the Supreme Court has long recognized the policy benefits of allowing ambiguity in patent coverage. (See, Doctrine of Equivalents). Most technology users would prefer to understand the scope of claims before litigation and use that information to decide whether to obtain a license. However, the ambiguity (in combination with other factors) lead to the common practice of holding-out until a court construes the claims.
For indefinite claims, the statutory guidelines come from 35 U.S.C. § 112(b) that requires claims that "particularly point[] out and distinctly claim[] the subject matter which the inventor … regards as the invention." The doctrine of indefiniteness finds its statutory support from §112(b). And, when a claim is indefinite it is both unpatentable and invalid.
Once a patent issues, it tends to be quite difficult to invalidate that patent on indefiniteness grounds. The difficulty begins with the statutory presumption of validity under § 282 that requires clear and convincing evidence of invalidity. That difficulty continues with the standard for indefiniteness itself. In particular, the Federal Circuit has required that invalidity by indefiniteness requires proof that the challenged claim is ambiguous in a way that is "insoluble." In Biosig, the Federal Circuit similarly held that indefiniteness of an issued claim can only be found "if reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim."
In a new petition, John Vandenberg's team at Klarquist Sparkman has asked the Supreme Court to reconsider the Federal Circuit's standard on this point. Nautilus presents the following questions:
1. Does the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming?
2. Does the presumption of validity dilute the requirement of particular and distinct patent claiming?
Many of these same issues have been previously addressed by the Supreme Court in pre-1952 decisions. See, for example, United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942). In Union Carbide, the court wrote that:
The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field. Moreover, the claims must be reasonably clear-cut to enable courts to determine whether novelty and invention are genuine. . . . Whether the vagueness of the claim has its source in the language employed or in the somewhat indeterminate character of the advance claimed to have been made in the art is not material. An invention must be capable of accurate definition, and it must be accurately defined, to be patentable.
Interpreting the precursor to Section 112(b), 35 U.S.C. § 33 (1932). The old § 33 included the parallel requirement of claims that "particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery."
In the Union Carbide, the court's problem with the claims was what it called functionality, writing: [T]he claims are but inaccurate suggestions of the functions of the product, and fall afoul of the rule that a patentee may not broaden his claims by describing the product in terms of function. Holland Furniture Co. v. Perkins Glue Co., 277 U.S. 245; General Electric Co. v. Wabash Corp., 304 U.S. 371. The particular claims at issue in Union Carbide are as follows:
1. Substantially pure carbon black in the form of commercially uniform, comparatively small, rounded, smooth aggregates having a spongy porous interior.
2. As an article of manufacture, a pellet of approximately one sixteenth of any inch in diameter and, formed-of a porous mass of substantially pure carbon black.
See U.S. Patent No. 1,889,429. Read the claims again and look for the functional limitations, then read the Supreme Court's decision.
In General Electric Co. v. Wabash Corp., 304 U.S. 364 (1938), the Supreme Court similarly took issue with the indefiniteness of issued patent claims.
The limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others, and the assurance that the subject of the patent will be dedicated ultimately to the public. The statute seeks to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their rights. The inventor must inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.
. . . . Patentees may reasonably anticipate that claimed inventions, improvements, and discoveries, turning on points so refined as the granular structure of products, require precise descriptions of the new characteristic for which protection is sought. In a limited field, the variant must be clearly defined.
GE v. Wabash.
Reaching further back to the 19th century, the court wrote in Merrill v. Yeomans, 94 U.S. 568 (1876) that a patentee has no excuse for ambiguous or vague descriptions.
The growth of the patent system in the last quarter of a century in this country has reached a stage in its progress where the variety and magnitude of the interests involved require accuracy, precision, and care in the preparation of all the papers on which the patent is founded. It is no longer a scarcely recognized principle, struggling for a foothold, but it is an organized system, with well-settled rules, supporting itself at once by its utility, and by the wealth which it creates and commands. The developed and improved condition of the patent law, and of the principles which govern the exclusive rights conferred by it, leave no excuse for ambiguous language or vague descriptions. The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights. The genius of the inventor, constantly making improvements in existing patents,—a process which gives to the patent system its greatest value,—should not be restrained by vague and indefinite descriptions of claims in existing patents from the salutary and necessary right of improving on that which has already been invented. It seems to us that nothing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent.
Merrill (1876). These cases are in obvious tension with the Federal Circuit's current standard. However, there remains only a small chance that the Supreme Court will hear the case.
One key to the petition here is the argument that the Federal Circuit made it triply difficult to invalidate a claim on indefiniteness ground by (1) using the presumption of validity of § 282 to create stringent elements for the invalidity defense and then (2) also requiring clear-and-convincing evidence to prove those elements; all while (3) regularly ignoring the reality that indefiniteness is a question of law (as are patentable subject matter and obviousness).