How will Nautilus affect indefiniteness at the PTO?

Guest post by Lisa Larrimore Ouellette (Visiting Fellow, Yale Law School Information Society Project) and Jonathan Masur (Deputy Dean and Professor of Law, University of Chicago Law School).

In our new draft article, Deference Mistakes, we examine indefiniteness doctrine as one example of how decisionmakers sometimes mistakenly rely on precedents in inapposite contexts. So we were very interested in the Supreme Court’s reformulation of the indefiniteness standard in Nautilus v. Biosig on Monday, and particularly in how this decision will affect the indefiniteness standard applied in the examination context.

Pre-Nautilus, claims under examination at the PTO were supposed to be evaluated under a stricter indefiniteness standard than granted claims. In Exxon Research (2001), the Federal Circuit stated that to “accord respect to the statutory presumption of patent validity,” it would find granted patent claims indefinite “only if reasonable efforts at claim construction proved futile” and the claim was “insolubly ambiguous.”

The obvious corollary to the Federal Circuit’s holding in Exxon is that when the presumption of validity does not apply, the indefiniteness standard should be more stringent. The BPAI explicitly clarified this point in the precedential Ex parte Miyazaki (2008) when it held that examiners should use “a lower threshold of ambiguity” such that claims are indefinite if “amenable to two or more plausible constructions,” and the MPEP emphasizes this point.

As we describe in Deference Mistakes, however, the less stringent “insolubly ambiguous” standard was mistakenly imported into the examination context and repeatedly cited in BPAI and PTAB decisions even after Miyazaki. And once ambiguous claims are granted, they are entitled to the presumption of validity and are less likely to be struck down, notwithstanding that they were granted under a mistaken standard.  The affirmance of these patents on appeal following infringement proceedings likely led to the PTO granting even more indefinite patents, which were then upheld on appeal, a vicious cycle. And if these patents came to be seen as the new normal, that could have made the PTO even more permissive. The result could have been creeping decay of the PTO’s effective indefiniteness standard, with indefinite patents begetting ever more indefinite patents.

At first glance, Nautilus appears to fix this problem of two different legal standards that might be mistakenly applied in the wrong context. In footnote 10, the Supreme Court states that the “presumption of validity does not alter the degree of clarity that §112, ¶2 demands from patent applicants,” suggesting that the legal test for indefiniteness should be the same in the infringement and examination contexts. The Court expressly leaves open whether this evaluation of the claims involves subsidiary factual findings and whether deference is due to any such findings—issues the Court will return to next Term in Teva v. Sandoz. But however these fact-based issues are resolved, it seems that Miyazaki‘s articulation of the legal standard for indefiniteness is no longer good law (unless, of course, the Federal Circuit adopts this as the unitary test).

Doctrinally, this requirement of a unitary legal standard for indefiniteness seems clearly right: as the Supreme Court explained in Microsoft v. i4i, the presumption of validity required by §282 is an evidentiary standard that requires invalidity to be proven by clear-and-convincing evidence, and it is thus inapplicable to questions of law. Eliminating the dual standard also has the apparent benefit of preventing the kinds of overt mistakes we point out in Deference Mistakes.

As we explain in Deference Mistakes, however, eliminating the formal legal distinctions between “deference regimes” may not solve the problem where such deference arises from functional considerations. We worry that preventing the PTO from applying “a lower threshold of ambiguity” might inadvertently undermine the PTO’s current efforts to improve patent claim clarity. Although the EFF cheered Nautilus for being likely to “invalidate many more patents,” the Court suggested at p. 12 that the test “the Federal Circuit applies in practice” may be fine, so on remand the Federal Circuit may well use the same analysis under a new name. Even if indefiniteness is a purely legal question such that the presumption of validity has no formal effect, in practice courts may apply a relatively loose standard due to an understandable reluctance to impose the drastic penalty of invalidity just because a claim could have been written more clearly. In the examination context, where applicants have the ability to amend vague claims, the PTO’s efforts to demand greater clarity make sense. But if the looser indefiniteness standard from the infringement context is incorporated into the examination context—no longer as a doctrinal mistake, but as a legal requirement—it may subvert these efforts and exacerbate the problem of ambiguous patents.

69 thoughts on “How will Nautilus affect indefiniteness at the PTO?

  1. mistakenly rely on precedents in inapposite contexts.

    Context. Merely claiming “inapposite” does not make it so.

    Let’s take a closer look at the context of the Office and the examination process in relation to the law.

    One way of looking at this context is to imagine Venn diagrams of the differences of scope of a patent claim.

    Or, to use another phrase: the ends justify the means.

    It appears to be a readily accepted (but perhaps needing to be challenged) assumption that the patent office can rightfully reject claims otherwise allowable under law. Circle A being what the Office can reject and Circle B what the law rightfully rejects; Circle A being larger than Circle B. The problem is not in allowing the “policy,” but rather, the problem is not recognizing the actual context that such a “policy” is allowed throughout the examination process.

    The means of permitting Type II errors (bad rejections of good material) in order to reach the ends of preventing Type I errors (bad allowance of bad material) seems to be the context of Office “policy” in several regards (notable Broadest Reasonable Interpretation).

    What is often lost sight of in the application of these “Office policies” is the process in which the “policies” are in play: a back and forth, rebuttable prima facie case establish, and burden to overcome, process.

    In the initial foray – by the Office – Type II errors are permitted because the applicant can challenge the Type II error and overcome the prima facie case, putting the burden back on the Office to exam without making that Type II error. Circle A is only allowed in an initial “give.”

    Pundits (heavily in the academic area of lofty towers, unconnected with actual practice) seem to forget the important “take” and only focus on the initial “give.” Once that initial “give” is challenged, the Office may no longer use the context of allowed Type II error “policy,” and must use other means to reach the (still noble) desired ends.

    The Venn diagram analogy is that initially (but only initially) the Office is permitted by “policy” to make a Type II error and reject more than what the law permits to be patented. The circle in that initial rejection is larger than what the circle of a legal rejection entails. This is purely a step one contextual allowance – and the presumption is easily rebutted. Once rebutted, the Office may not stay with the Type II error position. They no longer have that “policy” option.

    The academics writing this article make the contextual error of not understanding the examination process. They incorrectly view what it required after the initial prima facie case has been rebutted with the incorrect sense of “patent expansion.” Calling the actual Circle B “inapposite” during the examination process is akin to maintaining the right of the examiner his prima facie position throughout the examination process, even after the prima facie case has been rebutted. This is clear error and is attributable to an anti-patent, let’s-make-it-had-to-obtain-patents mindset.

    This is a bias easily recognized given the history of the authors and their prior writings.

    This bias also shows why the patent bar reacts so strongly to such bias – and why the reaction was so strong to a past guest article on this blog by Prof. Sichelman whining about the backlash to academic writing.

    There are some regular contributors to the blog that take offense (even umbrage) at the seemingly “impolite” disagreement with academic writers. Such take offense at the mere suggestion that “Ivory Towerism” exists. How dare someone lambast a view steeped in such a mindset? I posit that such “daring” is not only acceptable, it is necessary. Legal academics put themselves in a position requesting, nay demanding, critical review. Not only are they in a position to shape nascent practitioners, but they seek to influence actual legal development. It is necessary that a critical view of their work be shared. “Politeness” is but a paltry secondary consideration in the critical development of what will bind all. Rather than be eager to be offended, try harder to absorb the points being made and recognize the pervasiveness of bias that the academic world brings with it. The academic world is simply not a meritocracy and is world in which advancement by peer recognition and acceptance breeds bias and groupthink. Unchecked (and unrealized), such bias and groupthink is a poison to legal development.

    1. I would also add that the scrutiny should be especially sharp in light of a series in the National Law Journal on judicial transparency – evidently, the ties between academia and the judiciary are more extensive than a first blush may reveal.

    2. You basically have this right anon. From what I’ve read in patent law and in other areas the academics seem to think that judicial activism is the norm. They seem to think nothing of misrepresenting facts and law to arrive at the result that they think is the politically correct result.

      We can only hope that the Internet reforms the academics. It is ashamed that the academics are not intellectually honest. Their arguments should be split into what the law and facts allow under the law and then a reform section for their articles that proscribe reformed laws.

      I have recently been reading in another area of law and was a bit surprised to find that Lemley’s method of making up the law to get his result is the norm for the academics. But, I guess the thing that we in patent law are facing that is so destructive is that Obama is appointing judges that are ignorant of both science and patent law and he appointed a shadow director that was selected by anti-patent corporations. And, we have a chief judge of the board that is nominating judges that as a whole are anti-patent. Pretty grim situation. It illustrates how much power the chief executive has. Just get judges to interpret the laws to meet policy goals.

      1. I’d also note from my readings of patent law that this is a relatively new phenomena. From my readings it seems that in the early 1900′s up until about 1970 that the academics appeared to fear the charge of making up the law to suit their result. But now reading a journal article is an experience in fiction. It is often a desire the author has for what the law should be and bizarre interpretations of the facts and law to arrive at their conclusion. I’d note that often citations don’t hold what is purported by the journal article.

        1. One objective test would be to take cites from law journals and ask attorneys to read the cite and ask them whether or not the cite supports the proposition contended in the journal article. From my readings, I’d say at least 10 percent of the cites are not even close.

          1. Let’s not forget things like numbers showing “how bad” patents are that are debunked – yet never retracted, a la Bessen and Meurer.

  2. Assumptions upon assumptiosn that are woven into a ‘nice-soounding’ fairy tale:

    mistakenly imported into the examination context… The affirmance of these patents on appeal following infringement proceedings likely led to the PTO granting even more indefinite patents

    Because it’s a plague, a rampant infection that is to blame for all modern evi1s. Or something.

    1. Yes that is really bad content. The academics seem to have zero sense of responsibility for what they say.

  3. The article is only a tad more indefinite and vague than these comments.
    The statutory rule is that claims not be indefinite. Permitting academic dilettantes or Supreme Court justices to say more wastes oxygen.

  4. Has anyone an example of a claim that is neither insolubly ambiguous nor informative with reasonable certainty? I think that would help the debate.

  5. To overcome a novelty objection, Applicant has to amend. But every proposed amendment falls foul of one or both of the requirements for written description and for definiteness. One more case that disappears in the “Bermuda Triangle”?

    Of course it can, and does, happen. Sometimes it’s poor drafting. Sometimes it’s just bad luck. And sometimes it’s because you don’t really have a novel, non-obvious invention.

  6. The guest-post authors should study the CAFC’s recent decision In re Packard, which is more on point to indefiniteness requirements at the USPTO.

    1. lol- the one with Plager’s self-serving concurrence in which neither other judge felt strongly enough to sign onto….?

    1. A rather low quality and unprofessional post Grumpy Cat.

      Why did you stop posting those pretty gifs?

  7. >>PTO … to improve patent claim clarity.

    This is a pretty good article. But, before you delve into the “patent claim clarity” problem how about figuring out that part of patent law. You should be appalled at the paper Lemley wrote on functional claiming and Prost’s reference to it in her attempt to limit claims to embodiments disclosed in the specification.

    1. As suspected, Masur building on Masur and a chum fest of anti-patent “expansionist” theory makes shoddy foundation for this piece.

      Move along, nothing new here.

  8. Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.
    Not particularly clear, if you ask me. What is “reasonable certainty”? To answer my own question, it appears to be a term that will take on a life of its own over the next few years.

      1. It leaves it open enough for Lourie to decide that he is a person of ordinary skill in any art and then invalidate the claim.

    1. If “reasonable” is defined as broadly when modifying “certainty”as it is when it is modifying “interpretation”, then the author and her friends will not be happy with this ruling, one tiny bit.

  9. I was already applying Miyazaki as a sort of “reasonable certainty” standard. You can check my old posts on the subject stating quite clearly that if the claim was reasonably clear (aka one reading it is “reasonably certain”) then I wasn’t there to just pick a 112 fight for the sake of it.

    That is to say, the reasonable certainty standard is consistent with miyazaki’s standard. If the claim is amenable to two or more interpretations to one of ordinary skill, then the person of ordinary skill reading it is not reasonably certain he has to pick from the two or more interpretations it is amenable to. If it is subject to only one interpretation to one of ordinary skill then he is reasonably certain.

    In effect, the “new” standard is really just a rewording of the miyazaki standard made simpler for simpletons. (like anon he he, even though he thinks he already advocated for the current holding lol).

    In other words, for all practical purposes all this decision does is bring the court practice in line with what the PTO already decided it was going to apply.

    1. Miyazaki is due for a certain death as being too far at the opposite end of the spectrum.

      If I were an examiner, I could Miyazaki anything without exception – language itself is just not built to withstand the legal ‘logic’ there.

    2. 6, standards are NOT “applied as a a sort of” meh, today I feel “reasonable” means…. whatever type of thing.

      That is the definition of arbitrary and capricious.

      You apparently do not understand the standard espoused in Miyazaki even though to you it is the best thing since sliced bread.

  10. I didn’t get the same thing from page 12 of the Nautilus opinion that the guest posters did. Instead, it looked to me like they were saying that the original verbose explanation of the CAFC standard may be closer to the statutory prescription, but their application of their own standard was basically just “insolubly ambiguous and not amenable to construction” with no further subtleties, which was in error. So while the CAFC may deem the claims valid again, they’ll at least have to actually change their analysis, not just give it a new name.

    1. Apotu,

      When you read the Supreme Court case, you must understand that they committed grave and irreconcilable errors in view of the legal record (and what the CAFC actually wrote).

      You almost have to wipe from your mind ANY lower court treatment and try to figure out what Alito et al was trying to say on a “clean slate.”

      1. Are you sure you’re not thinking of Alito’s Limelight opinion? Nautilus was by Ginsburg.

            1. clearly, OCPD has nothing to do with it.

              You might want to look into this “being correct” concept. Law really is not that subjective, all-in-the-mind, make up anything you want thing that your belief system suggests to you (and this may help you relate to others who do not want to follow your belief system and wonder why you act as if they naturally should, or – conversely – help you understand that there are objective measures OUTSIDE of yourself that you should be aware of.

            2. The point being glossed over (with the dust kicking on an over focus of which Justice screwed the pooch on which case) is that the Court as a whole are making some pretty horrendous 9-0 decisions.

              Those that wish to check their “critical thinking at the door” (or like to pretend that they even have critical thinking) will point to the numerosity of the decision and say something banal like 9-0, it must be right and it will be right forever – even when plain judicial error is displayed front and center! The uncritical will seek to blame anyone else but the Justices.

              Clench tight those eyes!

            3. ” is that the Court as a whole are making some pretty horrendous 9-0 decisions.”

              They’re only “horrendous” to retards like yourself.

              To us normal folks they’re making perfectly good 9-0 decisions that were too long in coming.

            4. (sigh)

              6, you quite miss the point of the thread in that these 9-0 decisions contain clear and unmistakable error.

              That you miss the error and in fact glory in it is, well, not s surprise and is a testament to the fact that you remain clueless as to what constitutes good and thoughtful law.

            5. “6, you quite miss the point of the thread in that these 9-0 decisions contain clear and unmistakable error.”

              According to you. According to the people with power, aka the supremes, on the other hand, there is no error.

              But you’re never going to understand this, or why it is relevant, because you don’t understand power. Maybe one day.

            6. According to you

              No. 6, according to the writer of this thread, as well as other recent threads.

              Pay attention – you are slipping into the “charge the red cape of anon said” thing again.

              (and further, the point of the matter – which seems to totally escape you, is that it is those with power that are making these mistakes – that’s kind of an important point)

      2. “You almost have to …try to figure out what Alito et al was trying to say on a “clean slate.””

        Are you saying that the Supreme Courts ruling was at least as ambiguous as the claim recitation indicating that the electrodes :have spaced relation but that the hand must be able to contact both electrodes, which I interpret as calling for a spacing of from about 1 mm to about 30mm apart?

  11. Until a patent issues, the applicant has no rights but procedural rights. The Office can demand a much high degree of clarity such that there is no ambiguity.

    After a patent issues, the scope must be reasonably certain. This standard should apply to patents in PGRs to the extent that 112 applies.

    So, I think the PTO can ramp up the requirement for clarity to the fricken roof if it so chose as it has a duty to the public to assure clear and definite claims.

    1. This standard should apply to patents in PGRs to the extent that 112 applies.

      Based on what?

      To be consistent (not to say that this is correct), but once a post grant review is started and the presumption of validity is removed, then ALL artifacts of that presumption are gone, including the artifact under consideration in this thread.

      Anything less – any ad hoc hodge podge treatment begs the questions of why THAT exception and not THIS exception – with answers ungrounded in any universal protocol.

        1. Non-responsive to my post, Ned.

          I am not drawing a distinction between pre and post grant, but rather, wondering how you draw the distinction of which areaas of law are treated differently once that item is pulled back into the executive’s arena.

          (note: this distinction is based on the assumption that the presumption of validity has been stripped away – from my other posts, you should know that I have a very real problem with that. But here and now, I am – for argument’s sake – taking it as a given that such has happened)

          1. anon, if the government has the power to cancel a legal right it has granted against the will of the owner of that right, then Marbury v. Madision is on point that this cannot be done.

            Marbury was follow in cases relied upon in McCormick Harvesting Machine Co. v. Aultman, 169 U.S. 606, 18 S. Ct. 443, 42 L. Ed. 875 (1898). See, e.g., US v. Schurz, 102 US 378 (1880) McCormick directly held that as a matter of constitutional law, again, going back to Marbury, that the government had no power or right or authority to reexamine a patent, let alone cancel one. That can only be done in court.

            The government can sue to cancel, but that is the only right the government has.

          2. One more point, the District Court in Patlex held reexaminations constitutional because congress had provided a right of a trial de novo in district court.

            Congress withdrew that right in the AIA.

    2. Meh, reasonable certainty is fine for examination as well as post-examination /issuance. We don’t have to excise every last bit of ambiguity. Though I guess empowering the PTO to do so at its whim couldn’t be a bad thing.

      1. empowering the PTO to do so at its whim couldn’t be a bad thing.

        LOL – oh, how very Duell of you. Taffas would like a chat.

    3. The Office can demand a much high degree of clarity such that there is no ambiguity.
      The English language, by its vary nature, is ambiguous to one extent or the other (“the definiteness requirement must take into account the inherent limitations of language”). As such, the USPTO cannot require something that cannot be achieved (i.e., “no ambiguity”) (“[s]ome modicum of uncertainty … is the ‘price of ensuring the appropriate incentives for innovation’”).

      So, I think the PTO can ramp up the requirement for clarity to the fricken roof if it so chose as it has a duty to the public to assure clear and definite claims.
      Wrong, wrong, and wrong. (“Section 112, we have said, entails a ‘delicate balance.’”)

      1. Silly Oh No, you forget that some really do think that the Office can make up all the law and (substantive) rules that it wants to (either directly or through its Article I puppet).

        /eye roll

      2. As an EPO practitioner I like this thread because it allows me to compare what happens at the EPO today with some specially difficult Examiners, with what might happen from now on, from time to time, at the USPTO.

        I allude to the “Bermuda Triangle” of EPC Articles 54, 84 and 123(2). The application is swallowed up, and fails (even though it is the stated statutory duty of the EPO to “grant patents”.

        At the USPTO the corresponding triangle would be that formed by the three requirements of novelty, definiteness and written description. Thus:

        To overcome a novelty objection, Applicant has to amend. But every proposed amendment falls foul of one or both of the requirements for written description and for definiteness. One more case that disappears in the “Bermuda Triangle”?

        Patent Offices the world over are set on a course of penalising bad drafting. Ned, others, if you know this Bermuda Triangle thing cannot possibly happen at the USPTO, give me the legal reason will you. Thanks.

        1. ?

          I think you are looking too hard to find something that is already there.

          It is no mystery (Bermuda Triangle… really?) that poor applications fail.

          And such failings are not (in the least) limited to some type of “Holy Trinity” effect.

          This is a really banal object for you to spend so much time trying to find some great cross-sovereign comparison. You would do better to understand the root differences in the laws.

      3. Oh no, I repeat, the Office has a duty to the public to make sure claims are clear and definite. See, e.g., In re Morris. If a claim “scope” is not reasonably certain under the new standard, the Office can demand more of an applicant.

        After the patent issues, the situations changes. Any change in scope adversely affects the patent owner. So, even though the same legal standard may apply, the level of proof of invalidity must change to give the patent owner the benefit of any doubt. Thus, there must be a

        “presumption”

        of clarity that must be overcome. Not so in the PTO.

        1. I think the PTO can ramp up the requirement for clarity to the fricken roof

          followed by:

          If a claim “scope” is not reasonably certain under the new standard, the Office can demand more of an applicant.

          Did you see the SC’s use of “reasonable”? You don’t need the standard ramped up to the fricken roof to achieve reasonable certainty. Hence, doing so is not consistent with 112. Again, I’ll repeat what I wrote about your suggestion and commentary: “Wrong, wrong, and wrong.”

          1. Throw in to whom that reasonableness is measured by and you can call it a day.

            (Yes, I know that the anti’s cannot call it a day because they still cannot seem to grasp that the reasonableness of a claim is not measured by their scratch and sniff test, but instead is measured by the person having ordinary skill in the art to which the invention pertains, having been informed by the specification)

            The rest of us can sit back and knock off a couple of cold ones.

    4. There is no ambiguity.
      There is only breadth.

      I’m emailing that to Disney right now. Obi Wan should say it…..
      or maybe Yoda….

      Ambiguity there is not!
      Breadth there is….

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