Although non-precedential, Philips v. Zoll Medical (Fed. Cir. July 28, 2016) offers some interesting insight on the Federal Circuit’s approach to indefiniteness.
The Patent Act requires that claims be written in a way that “particularly point[s] out and distinctly claim[s] the subject matter which the inventor . . . regards as the invention.” 35 U.S.C. 112(b). In Nautilus, the Supreme Court held that a patent claim survives this test only if it provides “reasonable certainty” as to the scope and bounds of the invention.
In the case, the jury was instructed under the old standard that permitted invalidation under 112(a) only when a claim’s meaning was “insolubly ambiguous.” On appeal, the Federal Circuit vacated the not-invalid jury verdict and ordered a new trial. The court writes:
While there may be some factual scenario where the reference to “insolubly ambiguous” is nonprejudicial, this is not that case. Here, the sentence, “Rather, only claims that are insolubly ambiguous are indefinite,” is the strongest, most forceful statement in the entire instructions on indefiniteness. It seems almost certain that amidst the back-and-forth, give-and-take of the remainder of the jury instructions on indefiniteness, the jury would gravitate to the single, definitive statement in the instructions. Furthermore, this sentence is juxtaposed with, “Absolute clarity is not necessary,” and connected with “rather, only,” which slants the playing field against a finding of indefiniteness in a way that is no longer appropriate after Nautilus. On this basis, we find that the district court’s reference to the insolubly ambiguous standard was prejudicial.
Although we know that Nautilus made it easier to invalidate claims as indefinite, the court still has not spelled out the meaning of “reasonable certainty.” On this point, the court merely demurred: “While we have not clarified the relationship between ‘insolubly ambiguous’ and ‘reasonably certain,’ it must be admitted that the “insolubly ambiguous” standard is a harder threshold to meet than the post-Nautilus standard.”
Although the reasonable certainty test is new to the indefiniteness doctrine, it is not new to the law. The area where it is most well known is likely in proving “special damages” such as lost-profits on breach of contract or in a tort action. Some have also linked “reasonable certainty” as the inverse of “reasonable doubt.” Reasonable certainty only exists when there is no reasonable doubt. Henry L. Chambers, Jr., Reasonable Certainty and Reasonable Doubt, 81 Marq. L. Rev. 655 (Spring 1998).
The bottom line for the reasonable certainty standard is that, while some uncertainty is permissible, the scope should be free from speculation or conjecture.
[Updated to fix typo 102(b), not 102(a)]
Probably unfortunate timing for this decision as far as Farstone is concerned. Oral arguments were this morning (Tues Aug 2) in their case against Apple (Panel: Lourie, Newman and O’Malley).
Farstone is appealing the district court’s decision in view of Citrix that their (key) claim term “backup/recovery module” is indefinite. The term “module” invoked 112P6 and (whoops!) there’s no corresponding structure described in the specification. From the district court decision:
The specification describes a “recovery unit” as holding a collection of file backup data and configuration information that reflects daa that was in a hardware resource of the processing system at the tmie the recovery unit was created. These descriptions do not provide how the recovery unit is actually created by the backup/recover module. [citing Noah Sys] [emphasis in original]
I haven’t listened to the oral arguments yet. But I will try to in the near future.
Nice analysis, Dennis. Thanks.
Could someone professionally comment on what is likely to happen procedurally when a case like this is returned like this to the D.C.
Paul, this is another “measurement” case where the parameters and environment of measurement are so loosely stated that one cannot determine whether one infringes or how to avoid infringement.
On remain, there will be a retrial of this issue alone.
Ned
But what kind of re-trial? Is whether or not claim language is ambiguous under the new Sup. Ct. test a fact question always requiring a second jury verdict if a jury is still demanded? Even if there was sufficient uncontested evidence from the prior trial? What about Markman et al v. Westview Instruments, et al, 517 US 570 (1996) re claim interpretation as a
matter of law for the court?
Paul, ah, good question.
This IS a factual dispute. It goes to validity. I think it should be resolved by a jury.
Yeah I thought this was a question o lawl not a question o fact. Although for some reason D put down “112 (a)” with the a underlined. If it’s a 112 1st (a) question then it is a question o fact like for WD. If we’re talking 112 2nd (b) then it is a question o lawl. At least that’s best I recall. Idk why ned is saying otherwise.
Dennis, the post cites 112(a). Shouldn’t it be 112(b)?
LoL. Gotta love it when the announcement of the error fix is also in error:
“[Updated to fix typo 102(b), not 102(a)]”.
Wonder if he did that on purpose…
Well, you do remember what he said about typos and such, right?
…and I do have to wonder if the courts would hold themselves to the standard of “clarity,” and have any (and all) of their decisions simply voided when those decisions are not as clear as they seem to demand of patentees…
anon makes a good point. Those quickest to point the finger and shout “indefinite” (or, in Europe, “not clear”) are themselves the most likely to express opinions that lack clarity.
They have no experience, and no idea, how hard it is, to express in perfectly clear words, a description of, and definition of, an inventive concept that, at the time of writing, is brand spanking new hitherto unknown.
Like I always assert, drafting, not litigation, is the highest level expression of the arts of the patent attorney.
They have no experience, and no idea, how hard it is, to express in perfectly clear words, a description of, and definition of, an inventive concept that, at the time of writing, is brand spanking new hitherto unknown.
Oh, please. Courts write about new concepts all the time. And sometimes it’s hard! And sometimes they do a great job.
I’m not defending poorly written or unprecise judicial opinions but it’s ridiculous to state, as you did, that experienced jurists “have no idea how hard it is to express in perfectly clear words … an inventive concept.” They have at least as good an idea of “how hard it is” as anybody out there.
“Unprecise”…
😉
You misunderstand me, Malcolm.
Drafting a patent application is not something that judges do. Litigators get to critique patent applications written years earlier. By the time they do, everybody has become familiar with the invention, the patent and the accused infringement. With hindsight, it’s easy to see where the patent is indefinite.
For the patent attorney writing the application though, all there is to go on is what the inventor is reporting.
What the inventor is reporting is a thing that works, or a process that works. It falls to the patent attorney to abstract the “inventive concept” from a single concrete embodiment of it. The patent attorney gets just one chance, to identify the concept and express it in words. Almost inevitably, in any case that turns out to be of commercial importance, there is going to be an argument about the exact meaning of the words chosen to define the concept. The patent lasts 20 years, the definition has to be written before the 20 years starts and must perform for the next 20 years, and the argument about clarity and definiteness likely near the end of the 20 year term.
And you say that writing that definition free of indefiniteness, wide enough to catch all the infringers but narrow enough to be patentably distinguished from the art, is easy, that any judge can do it with one eye shut. You cannot be serious!
There is no such thing, given the limitations of language itself, as “perfect clarity.”
112 is merely becoming another “witching” ground (albeit one that I thought would have presented itself some four years ago or so).
Could not resist trying to be first.
The claim should be “free from speculation or conjecture” you say, Dennis. That made me wince.
What claim that ever issued is so clear that it is 100% resistant to speculation or conjecture as to its scope. All of them fail to meet the definiteness standard!
One can see the wisdom of those that wrote the EPC, denying as a ground of invalidity any want of clarity as to scope. The consequence is that the EPO, pre-issue, is mustard hot on that issue. No indefinite claim shall ever issue from the EPO, it vows.
Of course, it helps in Europe, that the Protocol on Art 69 EPC, mandatory on all courts trying infringement, instructs the court how to construe the claim fairly and with legal certainty. Perhaps the SCOTUS could write such a Protocol for the PTO, the DC’s and the Fed Ct?
Max, I do not see anything in Article 69 itself specific to claim ambiguity, or a difference for what should be normal claim construction under the en banc In re Philips decision in the U.S.? Is there some other provision “denying as a ground of invalidity any want of clarity as to scope” ?
Also in the U.S. we do not have the problem of a patent infringement court in the U.K. coming to a different final claim scope and infringement decision on the same EPO granted claim as a German court.
No Paul, you wouldn’t. Art 69 EPC says only to construe the claim in context. So far, so uncontentious. My cite was to the Protocol on Art 69, the 1973 “fix” to reconcile German central claiming and English peripheral claiming.
See Art 138 EPC for an exhaustive (note: only) list of the grounds under which validity can be put in issue, under the EPC. Does it Permit a validity attack for any deficiency of (Art 84 EPC) clarity? No, it does not.
As to decisions varying, from country to country within the EPC, well yes, but they vary just as much from judge to judge. Need I mention different Panels of the Federal Circuit? While Germany has a reputation of being friendly to patent owners, that no longer goes as far as systemically construing claims wider than in England.
Paul, here more on the Protocol.
Cast your mind back to 1973, when this stuff was written. It had to reconcile German “central claiming” with UK “peripheral claiming”. A German claim recites (to over-simplify) the Best Mode whereas a British claim defines the boundary fence. Think of the green on the golf course as the protected area. A pre-1978 German claim defines the position of the hole (somewhere near the middle of the green) whereas a pre-1978 UK claim defines the locus of the edge of the green.
But in 1973, under the emerging EPC, Europe needed a single harmonised way to construe a claim and find for it, everywhere, the same “scope of protection”.
Hence the Protocol to Art 69 EPC.
Bear in mind that the 38 Member State EPC territory finds judges working in a veritable Tower of Babel of different languages. Nuances of meaning in the issued English language claim interest them not at all. They seek the substance. I think that is (other things being equal) a plus point. It avoids sily decisions like the one in Chef America.
Thanks Max. Yes, that was my understanding, that EPO issued claim interpretations in litigation are supposed to be interpreted in some kind of hybrid compromise between [clearly inconsistent] German “central claiming” and UK [and normally U.S.] “peripheral claiming”. That always struck me as cross-breeding two different animals, never previously experimentally mated, to produce some kind of unpredictable hybrid animal [like the first mule, jenny, or worse].
Well yes Paul, I agree. That’s what everybody else thought too, back in 1978.
But the Protocol, you see, imposes a mandatory requirement on judges to give the claim a scope that not only gives the inventor a scope of protection that is fair having regard to their contribution to the art but also one that delivers legal certainty for the public.
It turns out that navigating between that Scylla and that Charybdis is a very narrow channel.
Now which of those two constraints do you want to take issue with? Do you quarrel with legal certainty or with fair protection?
Both legal certainty and fair protection are needed to at least attempt to promote technology and new products yet protect the public from overclaming, legal uncertainty, excessive litigation, and unfair interference with competitive products.
In the U.S. one has broad opportunities to broaden claims with hindsight all during prosecution, and even two years after issuance with a broadening reissue, and various opportunities to narrow patent claims during their entire lifetime, but with the pubic protection of “intervening rights.” Plus the “doctrine of equivalents” in some cases. It is not a perfect system but far less vague than a “central definition” claim not even definable in scope until litigated.
Agreed, that “central claiming” is useless. But in Europe, that went out in 1978. What remains of it is what you might recognise as a weak but still useful “Doctrine of Equivalents”. These days, for Europe, one drafts peripheral claims and the courts by now are used to it and expect it, as the minimum for delivery of the mandatory “legal certainty”.
The Proof of the Pudding, the Acid Test, Paul, is whether one can write a meaningful FtO opinion, given only the WO publication.
In Europe, you can.
But that’s mainly because of the prohibition on adding subject matter after the filing date. A very strict “written description” standard. Under the AIA, that too is coming soon, to a theatre near you too Paul. It’s an artefact of any FtF system. Mark my words.
Well that’s the first that I have heard of anyone – and I do mean anyone – raising a concern about “new matter added” and thus seeking to further change US law.
As I have pointed out previously, we already have a “no new matter” law and I have never seen an actual substantive complaint with it.
Where are you obtaining your tea leaves?
What I’m predicting is nothing more dramatic than increasing strictness, on the requirement for a “written description” to be present, already on the filing date, of exactly the subject matter of the claim, as amended during prosecution. There are already early straws in a gentle breeze. But the wind hasn’t really started to blow. Yet.
Your reply adds nothing – consider the post 7:29 am repeated here and please try again.
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