Supreme Court: To Be Valid, Patent Claims Must Provide Reasonable Certainty Regarding the Claim Scope

By Dennis Crouch

Nautilus v. BioSig (Supreme Court 2014) [New download here: 13-369_k53m]

Patents provide exclusive rights that are defined by a set of claims. The claims spell out the metes-and-bounds of the invention being claimed and are designed to put the world on notice of what is and what is not infringement. To facilitate this notice function of patent claims, the patent statute requires that the “claims particularly point[] out and distinctly claim[] the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112(b). The courts have wrapped these requirements in a doctrine known as indefiniteness. A patent claim that fails the test of indefiniteness is deemed unpatentable, invalid, and unenforceable.

Most patent claims have some amount of ambiguity in their scope. The question before the court in this case is how much is too much? Through a series of cases, the Federal Circuit has implemented was arguably a stiff test of indefiniteness – making it quite difficult to find a claim invalid as indefinite. As the Supreme Court writes:

According to the Federal Circuit, a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.”

In its opinion here, the Supreme Court found that the insolubly ambiguous fails to apply the statutory requirement noted above. In its place, the court has created a new test as follows:

A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention. . . . .

The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270 (1916). . . .

It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” against which this Court has warned.

On remand, the Federal Circuit will decide whether the particular claims at issue here meet that test.

In the decision, the court highlights the reality that the old rule offers an incentive for patentees to intentionally “inject ambiguity into their claims.” The new standard is intended to help eliminate that standard.

Key points and ongoing issues from the opinion:

  • The addition of a reasonableness inquiry into the analysis means that indefiniteness appears to be moving be moving away from a question of law and into factual territory. The issue has traditionally been seen as part-and-parcel of claim construction, but now has the potential of being shifted to a question for trial. Of particular note here is the Supreme Court’s reluctance to decide the particular case and its allusion to the notion that the result “may turn on evaluations of expert testimony.” (quoting Markman).
  • The Supreme Court indicates that “a patent” will be invalid based upon the failure of its claims. The longstanding practice of the Federal Circuit is that indefiniteness is done on a claim-by-claim basis, but here the court suggests that approach should change.  Assuming that indefiniteness is still considered on a claim-by-claim basis, one outcome of this decision is that it adds additional value to patents with multiple claim formulations.
  • The Supreme Court indicates that any ambiguity should be considered “at the time the patent was filed” and also that the patent’s prosecution history are important in the consideration. What is unclear then is whether the court intended to mean that the consideration should be at the patent issuance, the application actual filing date, the application’s effective filing date (taking into account priority claims to prior filed applications), or the date that the claims in question were filed / amended.

91 thoughts on “Supreme Court: To Be Valid, Patent Claims Must Provide Reasonable Certainty Regarding the Claim Scope

  1. First, Nautilus was NOT a claim rejection or a final decision. The Supremes just held unanimously that the “insolubly ambiguous” test the CAFC was using was inconsistently overly narrow vis a vis the requirements of 35 USC 112 and sent the case back for CAFC reconsideration under their new test. [The end result might even be the same for all we know now.]

    Secondly, why was this unanimous reversal of the CAFC so widely predicted in advance?
    Note what 112 says:
    (a) General. –“The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention. [N.B “full,” “clear” “concise, and “exact.”]

    (b) Conclusion.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. [N.B. “particularly” and “distinctly. ”

    [Both (a) and (b) can apply to claim ambiguity, since the case law requires claims to be read in light of the specification.]

    Ask yourself how did the CAFC ever get its test of “anything other than claims held “insolubly ambiguous” only as resolved by the CAFC de novo on appeal is OK” out of that 112 language? Much less, as the Sup. Ct. noted, how does that CAFC test meet the long established case law requirement that the key function of claims is to clearly inform others what conduct would or would not be infringing, BEFORE being sued?

  2. On its facts this decision is absurd. SCOTUS has again seized on the wrong case to articulate a new standard to redress imagined failings of the CAFC.

    Read the patent itself to determine the meaning of the expression “in spaced relationship with one another” that SCOTUS finds to possibly violate its new “reasonableness” standard. Under either the CAFC “insolubly ambiguous” standard or the newly articulated and (typically) vague SCOTUS standard, these claims are definite when the drawings are looked at.

    First of all, separate electrodes by definition have to be spaced from one another or they would be a single electrode. Second the drawings show that each electrode pair has to be gripped by the users hands – right hand pair and a left hand pair -so that contact with the palms and fingers can be achieved. The minimal spacing is just enough to avoid mutual contact. The maximum spacing should enable the smallest user’s hands to make contact with each electrode pair. The drawings by themselves without any written explanation reasonably inform the reader of the scope of this claim limitation.

    Furthermore the limitation “in spaced relationship with one another” states a truism of electrode pairs that probably need not even have been in the claim to make it allowable. All that needed to be claimed were the two electrode pairs. Would anyone have challenged such claims as indefinite?

    Of note, by the 1992 filing date of this patent, its examiners Bill Kamm and Scott Getzow had examined and issued hundreds of electrical medical device patents with claims to at least two spaced apart electrodes to sense a body electrical signal and/or to deliver electrical stimulation. In pacing lead claims it was common practice to recite such spacing, and no one ever challenged these patent claims as indefinite. I would not be surprised if the examiners had not required this language to make the claims definite.

    508 patents result from a USPTO patent search “pacing” and “electrode” and ACLM/”spaced apart”. 2214 patents result from the same search substituting “medical” for “pacing”. Larger numbers result using just spaced or separated.
    Admittedly not all these reflect the same issue of electrode spacing but many do.

    For example, look at claim 1 of recently issued Medtronic U.S. Patent No. 8,744,595:

    1. A method for deploying an array of electrodes through an introducer and into tissue, the array comprising “first and second electrodes spaced apart from one another along a distal end of a lead body,” and the method comprising: delivering the lead body through the introducer, while viewing a first marker of a marking system that is formed at a proximal end of the lead body, the marking system to precisely mark the electrode array and including the first marker and a second marker, the first marker having a length the same as that of the first electrode of the array, the second marker having a length the same as that of the second electrode of the array, a distal end of the first marker being spaced from a distal end of the first electrode by a length that is equal to an operative length of the introducer, and the first and second markers being spaced apart from one another by a distance that is the same as a distance between the first and second electrodes; determining that the distal end of the first electrode of the delivered lead body is approximately aligned with a distal end of the introducer by viewing the distal end of the first marker approximately aligned with a proximal end of the introducer; continuing to deliver the lead body through the introducer, while continuing to view the first marker; determining that a proximal end of the first electrode of the delivered lead body is approximately aligned with the distal end of the introducer, and, thus, deployed, when a proximal end of the viewed first marker becomes approximately aligned with the proximal end of the introducer; continuing to deliver the lead body through the introducer, while viewing the second marker of the marking system; determining that a distal end of the second electrode of the delivered lead body is proximately aligned with the distal end of the introducer by viewing a distal end of the second marker approximately aligned with the proximal end of the introducer; continuing to deliver the lead body through the introducer, while continuing to view the second marker; and determining that a proximal end of the second electrode of the delivered lead body is approximately aligned with the distal end of the introducer, and, thus, deployed, when a proximal end of the viewed second marker becomes approximately aligned with the proximal end of the introducer.

    This claim is replete with limitations related to the spacing. Is it vulnerable to attack as indefinite?

    This case should be decided by the CAFC on remand finding the claim language definite with the assistance of amici briefs from the medical device community which has used this language in claims for more than 40 years to make the claims more definite.

    1. I’m sorry Joe, but you really need to read the reexamination where the structural limitations were all deemed old, and claims were saved by a functional requirement. Thus spacing had to such as to provide a particular effect, but how that could be done was not described anywhere in the patent.

    2. Having read the CAFC opinion, I will qualify my above comments that if Nautilus could present evidence that BioSig knew of a spacing range between and the surface areas of the electrode pairs that optimized the ability to suppress noise and EMG signals and did not disclose the same (as is evident from the specification) then the claims would be indefinite as well as lacking in written description that also fails to describe the best mode. I do not see anything in the record that Nautilus did so assert, supported by evidence.

      The CAFC opinion recounts the affidavits presented by BioSig during reexamination of the patent showing how those skilled in the art could ascertain the optimum electrode sizes and spacing for each electrode pair that suppresses EMG signal amplitudes. Why did Nautilus not seize on that evidence to mount best mode and written description defenses?

      This case reminds me of the situation I was in in lawsuits brought by Medtronic against infringers of the phenomenally successful “tined pacing leads” covered by the Medtronic Patent No. 3,902,501. The invention maintained the electrode(s) at the tip of a transvenous pacing/cardioversion lead in contact with the heart wall by the entanglement of “soft pliant tines” formed of silicone rubber or polyurethane extending proximally from near the tip electrode with trabeculae (sponge like tissue) so that the tines resisted retraction of the lead tip, a serious problem with prior transvenous pacing leads. By the time we got to trial, all manufacturers had marketed tined leads and they enjoyed substantial commercial success.

      The ‘501 patent was attacked asserting `102, `103, and all three `112 defenses above, the `112 attacks asserting that the patent failed to disclose the lengths, number, thickness of the tines, the optimum angle of the tines, and the best spacing from the tip. All the patent shows is a drawing.

      But, a defense expert engaged to show how one skilled in the art could not practice the invention had to admit on the stand that using the drawing, he was able to produce a functional tined lead. And, I took the infringing lead engineering drawings and magnified them (on a Xerox machine) until the lead body diameter matched the lead body diameter in the `501 patent drawing. Lo and behold, the tines shown on the magnified drawing were the exact same thickness length, angle and distance from the tip as in the `501 patent drawing. All I had to do is make a transparency of one of the drawings and lay it over the other. End of story for the `112 defenses.

      And the `501 patent was found valid and infringed resulting in substantial damages and ongoing royalty revenue.

  3. There was this paragraph above a decision. It stated I had 30 days to find an atty. The case I got back was not docketed…. there was no proof the Court wrote it…. Later when I asked for copy I was told to contact another court. I did! And it was now docketed. Obviously they were wondering .. which was much later… If I was going to recognize my Letter I was supposed to have received from the court telling me I had 30 days to find a lawyer. WOW I get it well after the fake court decision, and obviously no letter. The court knew this was the case. they also knew I had mentioned that in my complaints about my mail problems.
    Imagine when I was able to get on Pacer this past March and found my address was changed 3 days after our only time ever seeing our atty. But he knew that before their meeting. My writing same was same! Do you know what same means? Of course you do. You claim to be a master at the English language PROFESSOR! So wouldn’t that be classified as a conspiracy before and after the meeting?

    1. Assume a battle of experts and the presumption of validity. There is a factual dispute, and validity has a right to a trial by jury.

      I think the court cannot give a construction in the face of a legitimate factual dispute and the right of the patent owner to have issues of fact regarding validity be decided by a jury.

      1. An interesting point – given that – as someone noted – definiteness appears to be leaning towards being a “mixed” issue, perhaps still in the final analysis a determination at law, but possibly with a foundation of fact determinations.

        Does this leaning remove the item from quick and easy DJ land…?

  4. Some commentators here suggest that experts will become more important. It seems, though, that the Supremes want to make it easier for DC judges to make indefiniteness decisions. Look again at Section IIIA, and especially this: “Second, in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” In other words, a claim is definite only if the intrinsic record provides the meaning. While an expert can be informative, this makes indefiniteness look more like claim construction – something the judge can and should do.

  5. That supposed Notarized Document? LOLOLOL He would lose his rights as a Notary. So just say he accepted the changes, highly suspect and surely not acceptable in the Rules he surely read and signed to get his Stamp!… Where’s the initials that should be there if in fact it would be allowed? So really why would anyone put that in the USPTO file? But then I have another of many Documents from the USPTO… But it too is really a fake like so many others. Someone put it in my home. So when it all comes together I wonder who is going to deal with the wire fraud? How can that be civil?

  6. NWPA,

    I would modify your comparison of Sarah and Malcolm just a bit:

    It’s not that Malcolm does not “make sense,” nearly as much as Malcolm simply is an arse and refuses to use law and fact and what others post in any intellectually honest manner, and outright refuses to have an actual conversation.

    Of course the reason why he does not do this is because the law and facts and what others post defeat his agenda which is based purely on philosophy/”policy”/opinion.

    There is nothing wrong – in itself – to believe in any one philosophy, to want to integrate any one “policy,” or to express any one opinion.

    Where Malcolm goes way way way wrong is in how he goes about expressing himself, the depths of his unethical posting style (leaving out and misrepresenting material facts and material law), and his reliance on Accusing Others Of That Which Malcolm Does to the exclusion of any real give and take, to the exclusion of any attempt to integrate real law, real facts, or to honestly take the points made by others.

    It is abundantly clear why he does this – he loses any debate based intellectual honesty.

    It is not clear as to why he thinks his vap1d tactics are somehow not immediately seen through, or why he insists on sticking to his short stale script.

      1. You Malcolm are the king of hypocr1tes, given your number one t00l is Accuse Others Of That Which Malcolm Does.

        It does not help your “cause” in that you post to the tune that intellectual honesty is not required here because this is just a blog, and that your ethics are seriously impugned with your habitual and purposeful misrepresentations and material omissions concerning facts, laws, and what others post on this modern media tool of advocacy.

  7. From the beginning Ms. Bovard should have done something, but. instead YOU called me to tell me the person that took control of my Trademark was who I had to go after. You told me you were the Tallahassee Police Dept. And it continued now 4 Patents and a fraudulent bankruptcy later I am still trying to get what belongs to me. Don’t worry. I will get my 11th amendment rights. Army be all you can be? So
    Karen you are Army so is the Shadow. So is Lehman, so is …… How did you get my Records saying I had been in a coma. How did you get my sons records. Why did you allow this to go on. You are responsible for the mess at the USPTO and the court.

      1. It’s not that Malcolm does not “make sense,” nearly as much as Malcolm simply is an arse and refuses to use law and fact and what others post in any intellectually honest manner, and outright refuses to have an actual conversation.

        Of course the reason why he does not do this is because the law and facts and what others post defeat his agenda which is based purely on philosophy/”policy”/opinion.

        There is nothing wrong – in itself – to believe in any one philosophy, to want to integrate any one “policy,” or to express any one opinion.

        Where Malcolm goes way way way wrong is in how he goes about expressing himself, the depths of his unethical posting style (leaving out and misrepresenting material facts and material law), and his reliance on Accusing Others Of That Which Malcolm Does to the exclusion of any real give and take, to the exclusion of any attempt to integrate real law, real facts, or to honestly take the points made by others.

        It is abundantly clear why he does this – he loses any debate based intellectual honesty.

        It is not clear as to why he thinks his vap1d tactics are somehow not immediately seen through, or why he insists on sticking to his short stale script.

  8. Ironic that the SCOTUS would refer to the patent statute when it suits them and then refers to their case law prior to the 1952 Patent Act when it suits them. The SCOTUS is the judicial body out of control. If the SCOTUS did statutory construction analysis –as they should–of 101, then we would not have had these many years of uncertainty. And, the SCOTUS should get that the Fed. Cir. should be the court that primarily does the statutory construction. The SCOTUS should give the Fed. Cir. deference.

    But then with recent appointments like Tarantula, who cares. May as well burn it all down.

      1. LOL – from Dr. Noonan at PatentDocs:

        The Court’s justification for adopting this test, over the Federal Circuit’s “insolubly ambiguous” test, is that the Federal Circuit’s test would “breed lower court confusion,” an ironic statement from a Court whose recent patent law decisions have bred so much confusion that even the Court having “special expertise” in patent law has been seriously confused in attempting to apply their decisions (see the Federal Circuit’s en banc opinion in CLS Bank v. Alice).

        link to patentdocs.org

          1. Ned,

            I chuckle at your continued ability to parse the decisions of the Supreme Court and hold infallible those that align with your crusades and hold those to be oddities those that do no align.

  9. More inscrutable drivel from SCOTUS, which seems to be driven at least as much a desire to insult the CAFC at every turn as it is to get patent law right. At least in this case, in contrast to many of its recent patent cases, it actually quoted one of the claims…

    I don’t think this decision will make much difference for patent drafters who until now have actually cared about their work. It’s long been good practice to have different types of claims and claims of varying scope, even if those claims constitute an attempt to claim the same thing.

    Nor do I expect the CAFC to take the route of invalidating an entire patent just because one claim fails 112: in principle each claim could appear in a separate patent, in which case only the indefinite claims would be invalidated. Forcing applicants to file so many applications is economically inefficient for applicants, competitors, the PTO and the courts. But I won’t be surprised if SCOTUS eventually invalidates an entire patent because of a single indefinite claim.

  10. I am very pleased to see the Court emphasize that an important purpose of a patent claim is to notify the public of what does NOT infringe.

    Looks like an opportunity for expert witnesses to develop expertise on why the claim language is indefinite.

    “Your honor, when I read the spec, I thought I knew the parameters of what the inventor discovered. But when I read the claim (which uses language broader than the spec), I could not tell with reasonable certainty, what is covered by the claim and, equally importantly, what is not covered by claim.”

    E.g.: an effective amount
    E.g.: a genus claim when the spec only discloses three species that work and litigation discovery reveals that there were hundreds of species that did not work.

  11. “Assuming that indefiniteness is still considered on a claim-by-claim basis, one outcome of this decision is that it adds additional value to patents with multiple claim formulations.”

    Thus, need to file a variety of independent claims with different formulations.

    1. Future (un)intended consequence… :

      More complex (larger and intricate) claim families…?

      I hear the whining now: those d@mm scriviners are just trying to hide the ball.

  12. I do not see how “..ambiguity should be considered “at the time the patent was filed” can logically be other than the “effective filing date” claimed for the application, since that is the proper “no new matter” deadline and the time at which the then-current meaning of technical terms would be used in drafting the specification?

    1. I do not see how “..ambiguity should be considered “at the time the patent was filed” can logically be other than the “effective filing date” claimed for the application

      Agreed — “the time the patent was filed” surely refers to the effective filing date of the patent and not, e.g., the date ten years after the effective filing date when the fifth continuation application was filed.

      1. but then that would mean that you can’t come in 12 years after the fact and file a bunch of evidence showing what your claim supposedly means, if that would be different than what it would have meant (sans your new evidence) at the time of filing correct?

        1. It would seem that you cannot rescue that which was not reasonably well defined to start with, but that you can steer among reasonable definitions within that arguable scope that initital definition.

          So your ability to be a lexicographer becomes much more constrained after initial filing.

        2. What about extrinsic evidence that dates back to what a claim terms meant to a person of ordinary skill in the art around the time of the effective filing date, and is not contrary to extrinsic evidence in the application itself and the prosecution history? The date that evidence is being presented is not the issue. Also, what the applicants attorney or the examiner thought the claim term meant or covered is not necessarily decisive.
          Also, some claim ambiguities are not even fully apparent until years after the patent issues when the patent claim is attempted to be asserted against a much later commercial product that no one would have thought to expressly encompass by a claim before the application was filed and prosecuted.

          1. Well paul, it sounds as if you are identifying the oft forgotten other edge of the sword as presented by the Justices of the Supreme Court in the KSR case: the preservation of due power for prior granted patents.

            It’s sometimes funny how some people only want to see patent-weakening effects, and want to close their eyes to the natural consequences that comes from some of these, um, interpretations.

          2. What about extrinsic evidence that dates back to what a claim terms meant to a person of ordinary skill in the art around the time of the effective filing date, and is not contrary to extrinsic evidence in the application itself and the prosecution history?

            Not sure what you mean by “extrinsic evidence in the application itself.” You mean “intrinsic evidence”? If a term is ambiguous because it’s used inconsistently by the applicant, then “extrinsic evidence” should not be allowed to tip the scale towards clarity unless that extrinsic evidence shows that the inconsistent usage by the applicant was erroneous. But applicants should fix those kinds of problem themselves before they go around sueing people.

            The date that evidence is being presented is not the issue.

            Whether the date that the evidence is presented is “an issue” or not depends on the evidence and what is being fixed, as you seem to understand.

            what the applicants attorney or the examiner thought the claim term meant or covered is not necessarily decisive.

            True but it’s certainly extremely relevant. Surely you aren’t suggesting that some inventors are not skilled enough in their own “art” to understand the meanings of the terms they choose to use… If applicants see that the Examiner is using a term incorrectly such that it might create ambiguity about that term, applicants should advise the Examiner accordingly. Otherwise, the applicant bears the risk. [shrugs]

            Also, some claim ambiguities are not even fully apparent until years after the patent issues when the patent claim is attempted to be asserted against a much later commercial product that no one would have thought to expressly encompass by a claim before the application was filed and prosecuted.

            Can you give a real world example of this actually happening? The fact problem you are describing seems likely to present other issues that are likely more difficult to overcome than any alleged “ambiguity” (e.g., enablement comes to mind).

            1. The essence of your post:

              Vinnie Barbarino – ad hominem
              yeah but (dust kick)
              yeah but (dust kick)
              give me facts/studies/evidence (major dust kick)

            2. Could you kick up any more dust without addressing the actual legal point being made by paul, Malcolm?

              I addressed Paul’s “actual legal points”, you sad little creepazoid.

      1. I agree with that logic, but Scotus says to look at the prosecution history, which occurs after the effective filing date

        There’s no inconsistency between the “logic” and the Supreme’s suggestion that the prosecution history is informative once you appreciate (1) that the prosecution history can’t be relied on by applicants to inject reasonable clarity into an ambiguous term by the introduction of new matter (e.g., a definition for a term that was not reasonably clear from the specification as filed); and (2) that, on the other hand, the inconsistent usage of a term in the specification and the prosecution history can certainly create ambiguity and will definitely be cited as evidence of such by defendants.

        Even more trivially, if the Examiner says that a claim term is ambiguous and the applicant says that it will prepare an amendment to correct the ambiguity but it never happens and somehow the patent still grants (stranger things have happened) that will also be deemed relevant.

        If all this seems like it puts a greater burden on the applicant to define terms clearly and take greater steps to avoid ambiguity in the claims then you understand the change in the law that has just taken place.

          1. You confuse language (for what it is) and clarity – which CAN change after filing.

            LOL. Whatever, man. You are the last person on earth qualified to discuss this subject.

    1. That may depend on how the PTO management [whenever it finally gets a new Director] will treat what seems like an inherent inconsistency between arguing that a claim is too ambiguous to search and the public need for an adequate prior search ASAP during prosecution?

      1. Rarely is a claim too ambiguous to search. That situation doesn’t seem to be impacted at all by this decision or the new standard. I haven’t finished reading the decision yet though. Do you guys know if they decided to implement this across the board so that it applies in the PTO as well? It looks like from their language they are. But I’m not sure as of this moment.

        1. I hope that “rarely is a claim too ambiguous to search” (as you indicate) will be enforced PTO examination policy, because yes, this is a 35 U.S.C. 112 interpretation, and 112 applies just as much to application examination, or more so, since claims can still be clarified while pending. But a good prior art search and its application can go a long way to forcing claim amendments that will reduce or eliminate initial claim ambiguities.

          1. Under compact prosecution, we are supposed to make our best guess at the intended scope of an indefinite claim and provide prior art rejections on that basis. (In some cases, though, a claim is just too far gone to do even that.)

            But note that if a 112 2nd rejection and a 102/103 rejection for the same claim make their way to the PTAB, they’ll generally reverse the examiner on the prior art rejection if they affirm on the indefiniteness rejection, on the basis that you can’t reject a claim over the prior art if you can’t construe it in the first place.

            1. Slighty OT are the rejections under 101 and 102 – the claim is rejected as not novel over an existing prior claimed patent, but the claim is not patent eligible (never mind the fact than an existing patent – with that patent’s presumption of validity – shows patent eligibility…

            2. never mind the fact than an existing patent – with that patent’s presumption of validity – shows patent eligibility…

              “Never mind” indeed.

              Get used to this.

            3. ?

              Your attempt at humor here – like most everything from you – is a massive FAIL.

              Of course, that you continue to conflate 101 and 102/103 even in the face of the 9-0 Prometheus decision and the direct repudiation by the Court of the government’s brief in which that argument sounds is not surprising at all.

            4. I’m not trying to be funny. The USPTO has granted a lot of patents that are ineligible under 101. The fact that you “presume them to be valid” does not make them enforceable. But the eligibility of those patents also has no impact on their usefulness as 102/103 references to be used against some jxnky claims newly presented to the USPTO or asserted in court.

            5. Don’t have to worry about being reversed like that anymore! That reason for reversing was based on the insoluablyambiguous standard being in place. Now that it is excised that reason for reversing is no longer present.

            6. You make the mistake of assuming that a claim has to be “enforceable” (whatever it is that you think that term means) to remove validity.

              Validity of a claim very much speaks to a 101 rejection being de facto wrong in an application.

              Let’s take your (as usual one-sided) take on things, and make the hypo even more interesting. Let’s make it the same examiner who one day allows a claim to be granted and the next rejects under 101. And for the sake of this hypo (and to not allow you any we@sel goalpost movements – no change in law concerning 101 has happened in-between the two events)

              See any problems now?

            7. “Validity of a claim very much speaks to a 101 rejection being de facto wrong in an application.”

              Actually there is an explicit office policy (I think it’s in the MPEP even) having to do with us never basing an opinion in application A on what we did in application B previously.

            8. That would be an interesting (but not conclusive) find 6, as the comparison is not between application and application, but between application and granted patent.

            9. Perhaps I should clarify for the mentally challenged, we don’t base what we find in application A on what we did previously in application B, regardless of whether app b issued and is now patent c.

  13. Dennis: The Supreme Court indicates that any ambiguity should be considered “at the time the patent was filed” and also that the patent’s prosecution history are important in the consideration. What is unclear then is whether the court intended to mean that the consideration should be at the patent issuance, the application actual filing date, the application’s effective filing date (taking into account priority claims to prior filed applications), or the date that the claims in question were filed / amended.

    I think the answer is “it depends” but it’s important that the Supreme Court seems to be acknowledging that, in some cases, an ambiguity present at the time of filing may be unfixable. For instance, an ambiguous functional or result-oriented term shouldn’t be per se fixable after the fact by the introduction of a clarifying definition or “test” created by the applicant and presented only after the ambiguity has been properly challenged.

    The patent prosecution is going to be important for resolving the question of ambiguity for the same reason that the prosecution history is important for claim construction: statements made by the applicant (and the Examiner and by art that is cited favorably or unfavorably by either party) can inform the understanding of either the meaning of a particular term or the extent to which that term is ambiguous. For example, if the term X is challenged at trial as ambiguous, defendant could prove the ambiguity by pointing out that the meaning ascribed to the term during prosecution was inconsistent. Likewise, just as in claim construction, related cases in which the term was used inconsistently could also inform the analysis.

    It seems reasonable to conclude that any time two parties disagree about the construction of a term and the patentee can be shown to have itself used the term inconsistently during prosecution (including within the specification and claims themselves, not just the examination history), the question of indefiniteness should loom large.

    1. “…in some cases, an ambiguity present at the time of filing may be unfixable.”

      I think this depends on what we mean by “unfixable.”

      Generally, new matter (particularly via subsequent filings, e.g. nonprovisionals) does not by itself invalidate anything. Rather, it merely alters the priority date effective for any claims that rely upon the new matter. Whether or not such a change in priority date results in invalidation (e.g. for prior art reasons) is another question.

      Of course, the US generally has a somewhat “softer” standard for what gets considered new matter than other jurisdictions – like notably Europe, where “literal” support/basis in the specification for any claim amendments is commonly required. Hence, in the US there’s often more room to amend claims (whether to cure indefiniteness, or to avoid prior art, etc.) without being deemed to lack written description support for it.

      1. Of course, the US generally has a somewhat “softer” standard for what gets considered new matter than other jurisdictions

        If you are talking about the ipsis verbis difference, then “softer” is not the right description, as that intimates that new matter is allowed in – when it is not, and that the ipsis verbis application is merely unduly harsh.

        1. Perhaps – but it seems like US courts commonly entertain arguments over how much or what kind of “implicit support” in a prior related application is enough to prevent a subsequent filing from being deemed to contain new matter. (Maybe accepting a certain amount of subjectivity is simply the price that any system must pay in order to be able to consider implicit matter.)

  14. I especially liked the part where “being one’s own lexicographer” was used to indicate a further sense of responsibility on patent applicants to be unambiguous in their claiming (p. 11), rather than what it’s usually cited for, namely, as free license to submit nonsense to the Office and expect it to be rubber-stamped.

    1. Maybe they were reading patently-o. I railed on this very point years ago, using precisely the same reasoning structure.

      Maybe things are looking up.

      Maybe the Gobbledygook Era is coming to a close.

      Although there remains much work to be done, and although the CAFC has always been able to find a way to make a mess.

      1. LOL – another one-sided see-only-what-he-wants-to-see-and-ignores-the-mess-that-is-the-Supreme-Court poster…

        He’s as blind as he can be
        Just sees what he wants to see
        Nowhere Man can you see me at all?

        Nowhere Man, don’t worry
        Take your time, don’t hurry
        Leave it all till somebody else lends you a hand

  15. The Supreme Court indicates that “a patent” will be invalid based upon the failure of its claims. The longstanding practice of the Federal Circuit is that indefiniteness is done on a claim-by-claim basis, but here the court suggests that approach should change.

    I would think that the Court would have given us a little more analysis on this point if this is what they were suggesting. In any case, 112 requires only that the specification include at least one claim that particularly points out and distinctly claims the invention. Striking down an entire patent that meets this requirement on the grounds that it also includes an ambiguous claim would seem to go beyond the statutory language.

    1. Dan, You are probably right in your conclusion, although I might disagree with your analysis. Although Section 112(b) only requires one claim, it would be odd to suggest that we are OK with some of them being indefinite.

      1. I certainly didn’t mean to suggest that we’re OK with the enforcing of indefinite claims. But the Federal Circuit’s current approach is “that we are OK with some of them being indefinite,” as long as the claims in suit meet 112.

        The entire-patent-is-invalid-if-one-claim-is-invalid is an interesting thought, however. I suppose you could have an approach under which a party seeking to enforce any claim of a patent has to disclaim any indefinite claims before proceeding. This would trigger invalidity defenses directed to claims other than the claims in suit, however.

          1. Dennis, are you implying that we may see the day when if claim 1 is indefinite and claim 2 is definite (valid & infringed) then all claims in the patent are unenforceable?? Very scary

            1. I don’t think Dennis was implying that. However, I understand that South Africa works that way, although you might be able to amend after grant to take out invalid claims. Not exactly sure how the process works.

      2. The Court was being sloppy. Nothing new there.

        It’s well-settled that each claim is a separate inventions and invalidity always proceeds on a claim-by-claim basis under Section 282 (now 282(a)). And it wouldn’t make sense to invalidate, say, independent claim “B” merely because independent claim “A” in the same patent is indefinite. We’re not talking about something that taints the patent like, say, inequitable conduct.

        1. I agree with DDG. Each claim is a separate invention. If a claim is §112 indefinite, then that claim is invalid.

          We all use the shorthand of saying the “patent is invalid” when we really mean that all of the claims have been found to be invalid. [As DDG notes, there are situations where some conduct taints the entire patent making the patent unenforceable even if one or more of the claims are valid.]

          I suspect that there are many patents out there that have multiple claims of which some of the claims are valid and some of the claims are invalid. And you only need one claim to be valid and infringed to win the case.

  16. I haven’t read the opinion yet, but from this brief summary, this is very promising. It appears that the SC agrees with me that the CAFC has been doing much harm to patent law, and has taken this opportunity to address indefiniteness.

    I could never stand how courts would bend over backwards to find some absurd claim construction that was “not insolubly ambiguous”–especially the district courts and the CAFC, none of which have any real technical specialists as a rule.

    Hopefully this will cut down on the number of claim construction absurdities.

  17. Make note of the “in the art” and the “in light of the specification” (as I have instructed).

    Who’s your Daddy?

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