Dow v. Nova: “Nautilus changed the law of indefiniteness”

By Jason Rantanen

The Dow Chemical Company v. Nova Chemicals Corporation (Fed. Cir. 2015) Download Opinion
Panel: Prost, Dyk (author), Wallach

Earlier this year in the opinion on remand in Biosig v. Nautilus, Judge Wallach rejected the argument that the Supreme Court’s opinion on the indefiniteness doctrine  “articulated a new, stricter standard.”  783 F.3d 1374, 1379 (Fed. Cir. 2015).  Instead, the Court  “modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’”  Id. The thrust of Judge Wallach’s opinion was that the problem the Supreme Court saw with the Federal Circuit’s previous indefiniteness doctrine was not with the standard that the Federal Circuit was actually applying; it was that the words the Federal Circuit had been using could lead district courts astray.

Dow v. Nova presents a dramatic contrast, one that (in my view) goes a long way towards righting the boat.   Here, Judge Dyk reiterates in the strongest words since Nautilus that the Court’s opinion clearly changed the standard for indefiniteness.  There is no hint of mere Supreme clarification in this opinion, as the outcome turns entirely on whether the pre- or post-Nautilus standard applies.  Under the old standard, the result at the Federal Circuit was that the claims were definite; under the new standard, the result was that they are indefinite.  And given the purely nondeferential review applied in both cases, this pair of cases provides possibly one of the neatest examples of how a legal standard can be outcome determinative.

Background: In 2010, Dow obtained an infringement judgment against NOVA, with a jury rejecting NOVA’s indefiniteness argument.  The Federal Circuit affirmed in 2012, holding that the patents were not indefinite under its pre-Nautilus precedent.  On remand, the district court held a bench trial on supplemental damages for the period after the judgment through expiration of the patents (October 2011). While NOVA’s appeal was pending, the Supreme Court issued Nautilus.  NOVA argued that this intervening decision required the supplemental damages award to be vacated because the patents are invalid for indefiniteness.

Bars to re-litigation of indefiniteness: Nova’s challenge faced a substantial procedural hurdle, however.  Because it had litigated, and lost, its indefiniteness challenge, it would ordinarily be barred from re-litigating that issue under the doctrine of issue preclusion or law of the case.  (Claim preclusion does not apply under Federal Circuit precedent because a claim based on continuing conduct constitutes a separate claim.)     “[T]he doctrine [of law of the case] posits that when a court decides upon a rule of law, that decision should continue to govern the same issues in subsequent stages in the same case.”….Issue preclusion “bars ‘successive litigation of an issue of fact or law already litigated and resolved in a valid court determination essential to the prior judgment.’” Slip Op. at 11 (citations omitted).  However, “when governing law is changed by a later authoritative decision,” these two doctrines do not apply.  Id. at 12.

Nautilus and change in law: There are three requirements for the change in law exception to apply: (1) “the governing law must have been altered;” (2) “the decision sought to be reopened must have applied the old law;” and (3) “the change in law must compel a different result under the facts of the particular case.”  Slip Op. at 14-15.  Here, the court held, those requirements were met by the Nautilus opinion.  “First, there can be no serious question that Nautilus changed the law of indefiniteness. This was indeed the very purpose of the Nautilus decision.”  Slip Op. at 16.  Second, the earlier decision in Dow applied the old law:

Dow argues that our opinion in the previous appeal was not inconsistent with
Nautilus and that we did not apply the “amenable to construction” or “insolubly ambiguous standard.” But the fact that we did not include that particular language does not mean that we were not applying the prevailing legal standard. We cited Exxon, see Dow, 458 F. App’x at 917, which Nautilus specifically cited as exemplary of the rejected Federal Circuit standard…..We also explained that “the test for indefiniteness is not whether the scope of the patent claims is easy to
determine, but whether ‘the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree.’” Id. at 920 (quoting Exxon, 265 F.3d at 1375). This language corresponds exactly to the “amenable to construction” or “insolubly ambiguous” standard rejected in Nautilus.

Slip Op. at 17-18.

Third, the outcome was different under the Nautilus standard than under the pre-Nautilus caselaw.  Here, the issue was a measurement problem: which methodology should be applied to determine the “slope of strain hardening.”  “Three methods existed to determine the maximum slope, each providing, as Dow admits, “simply a different way of determining the maximum slope.”  Slip Op. at 21 (emphasis added).   None of these methods were taught in the patent, nor did it provide “any guidance as to which method should be used or even whether the possible universe of methods is limited to these four methods.”  Id. at 23.  And Dow’s expert used a fourth method, which he used after applying “only his judgment of what a person of ordinary skill would believe.”  He did not testify that one of ordinary skill in the art would choose his method over the three known methods.

Under the previous indefiniteness standard, the court observed, that Dr. Hsaio had developed a method for measuring maximum slope was sufficient.  But under the Nautilus standard, “this is no longer sufficient:

The question is whether the existence of multiple methods leading to different results without guidance in the patent or the prosecution history as to which method should be used renders the claims indefinite. Before Nautilus, a claim was not indefinite if someone skilled in the art could arrive at a method and practice that method. Exxon, 265 F.3d at 1379. In our previous opinion, relying on this standard, we held that the claims were not indefinite, holding that “the mere fact that the slope may be measured in more than one way does not make the claims of the patent invalid.” Dow, 458 F. App’x at 920. This was so because Dow’s expert Dr. Hsiao, a person skilled in the art, had developed a method for measuring maximum slope. See id. at 919–20.

Under Nautilus this is no longer sufficient.  “[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 about the scope of the invention.” 134 S. Ct. at 2124; see also id. at 2129 (“[W]e 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.”). Here the required guidance is not provided by the claims, specification, and prosecution history.

Slip Op. at 23-24. That an expert chooses to use a particular measurement technique is insufficient for meeting the requirements of indefiniteness.  “As we held in Interval Licensing, a claim term is indefinite if it “leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion.’”  Slip Op. at 25.  Perhaps this could have been satisfied by expert testimony as to which methodology a person of ordinary skill in the art would have used, but that will be a question for another day.

Some more thoughts on the opinion:

  • The opinion takes pains to distinguish Biosig v. Nautilus.  In Biosig, the question was how one of ordinary skill in the art would determine what “spaced relationship” meant.  There, “we held that the prosecution history, the language of the claims, and the knowledge of one skilled in the art demonstrated that “a skilled artisan would understand the inherent parameters of the invention as provided in the intrinsic evidence” and that the claim term at issue “informs a skilled artisan with reasonable certainty of the scope of the claim.”  Dow at 25, n. 10.   One way to think about Nautilus is that it’s really about figuring out the meaning of words in the claim, whereas this case and Teva are really about how to determine whether those words, with their meaning understood, are met.
  • The weird tension about indefiniteness being a question of law but involving factual determinations remains.  Here, the issue was originally tried to a jury (probably erroneously as the Federal Circuit implied in the original Dow opinion), and the Federal Circuit’s analysis here focuses less on interpreting the text of the claims and more on identifying which measurement methodology a PHOSITA would have picked (which sounds like a factual question to me).  Regardless of this tension, I’d expect that in future cases knowledgeable counsel will make sure that there’s good support for the particular measurement methodology used by their experts, with the experts also providing support for the proposition that their methodology is the one that a PHOSITA would have used.
  • Another way to think about this case is in tandem with Wiliamson v. Citrix, in which the Federal Circuit relaxed the difficulty of invoking § 112, para. 6 when the words “means” or “step” aren’t used in the claim.  The effect of that decision was to make it riskier to use functional language in a claim when no corresponding structure is disclosed in the specification.  Dow moves in a similar direction: when no measurement methodology is described or suggested in the specification, functional limitations such as the one here may render the claim indefinite, at least when a PHOSITA would not know which of several possible methods to use.
  • Lisa Larrimore Ouellette discusses the decision on the Written Description blog as well.

116 thoughts on “Dow v. Nova: “Nautilus changed the law of indefiniteness”

  1. 13

    Night: Ned>>>>they were claiming structure, mechanical or electrical structure, not in terms of what they were, but in terms of the results they achieved.

    That is right and that is the proper way to claim an invention in modern times. The specification then includes examples of actual structure and the claims are referring to the set of solutions that are enabled to a POSITA in view of the claims and the spec.

    That is the ONLY way it is possible to claim the invention in MODERN times.

    Thank you, Night, for your confession. I agree that everybody today is actually claiming the invention in terms of results, as opposed to what it is. Everybody. I see it in virtually every patent. It is obviously being taught. Moreover, the patent office lets people get away with it. The Federal Circuit lets people get away with it. And people who litigate patents are not raising the issue in court.

    And yet, it is illegal under Supreme Court precedent. Functionally claiming of the invention has always been illegal under the Supreme Court precedent.

    1. 13.1

      Ned says >>>as opposed to what it is.

      No, “what it is” is defined by the result plus the solutions presented in the spec plus POSITA solutions. I have quoted college text books to you that say just that for engineers. That is how real inventors think. That is reality.

      You persist in your witch hunt trying to generate a new witch word that has no meaning in reality. Stomach turning that in this day and age such a weak argument would ever be held by any intellectual honest person and would ever be entertained twice.

      Ned, accept the challenge. Let’s see you claim it differently and capture all the solutions that are enabled by the spec + POSITA.

      Plus tell us an embodiment that is covered by the claims that shouldn’t be.

      You see, in reality, you are wrong. In reality not the witch world Google fueled K street nonsense of the anti-patent world, this is the right way to write a claim.

      1. 13.1.1

        Night, when claiming old elements in a combination claim, there is enablement for the full scope.

        When claiming new structure, circuits, compositions, etc., claiming them in terms of the results they achieve is not claiming what was invented with particularity regardless that someone could build one within the scope of the claim. Further, such a claim is so broad as to capture independent inventions of others that accomplish the same result — retarding progress, which is against the constitutional purpose in addition to being against the statute.

        1. 13.1.1.1

          I hope all the readers of this blog notice that you won’t write claims.

          Also, I hope everyone can discern that you are answering the question with abstract nonsense witch words.

          Ned>> such a claim is so broad as to capture independent inventions of others that accomplish the same result —

          OK, tell us how this can happen? I think the condition is well known in patent law.

          But, please, Ned, tell us how to claim the set of solutions enabled by the spec + PHOSITA. Try to re-write the Nautilus claims.

          The fact is this is another witch hunt.

          There is NO problem with functional claiming where the claims are construed properly in terms of a scope of enablement. On the other hand, it is impossible to claim the invention without functional claiming.

          Plus, again you don’t address the fact that people in the field write about inventions with functional words to represent their solution as enabled by the disclosure plus a PHOSITA.

          So, what we have here is a witch hunter –NED–who will not address real patent law, but is trying to create another witch word.

          1. 13.1.1.1.1

            Notice too what Ned (and Lemley) are trying to do is very much like racism. They are trying to create a category that is ill defined absent of real facts that is a negative category of bad things. This type of thinking should be abhorrent to all enlightened thinkers.

            Ned, be a moral intellectually honest man and stop your witch hunt.

            Address the reality in my post. But, then we all know you won’t. You will do what all the anti-patent K-street Google driven people do and ignore the substance of my post and push on with your witch word use.

          2. 13.1.1.1.2

            Nautilus: apparatus claim, not a method claim. Claim any grip electrode spacing. Unwanted signals nulled.

            Prior art, fixed spacing, no null in unwanted signals.

            If I develop a new grip coating that blocks the unwanted signals at the grip, I still infringe because signals are blocked and the grips have spaced electrodes.

            Thus the claim covers the result, not any particular spacing.

            1. 13.1.1.1.2.2

              Sorry for the long delay Ned. I have a lot of deadlines to keep up with.

              Your response is ridiculous. Your ridiculous claim: “any grip electrode spacing. And,Unwanted signals nulled”. The actual claim includes structure.

              “electronic circuitry including a difference amplifier having a first input terminal of a first polarity and a second input terminal of a second polarity opposite to said first polarity.”

              You see the actual claim would not cause your new invention any problems would it? And your false claim is not OK. “Unwanted signals nulled” is not enough structure. POSITA would not be happy with a claim like that. It brings up too many questions into how that function would be accomplished and where.

              You see. I am right. You can’t debate me in a real debate. You will likely merely go hide away again and yap and yap with your witch words. You get it? In reality there is meaning to how a POSITA interprets functional elements. You get that? Reality. Meaning in reality.

              Try to actually come up with real claims that represent real inventions and you have no argument. And Lemley should be sanctioned for his paper on functional claiming.

              1. 13.1.1.1.2.2.1

                You see real inventors have a language of discussing and describing inventions (and engineers and scientist do the same thing) that is a mix of structure and function. This is probably the only way to discuss reality. You know that thing that you want to take us from.

                May you anti-patent lot live in the world you want.

              2. 13.1.1.1.2.2.2

                Night, everything described in the specification was old in the art but for the discussion of the unwanted signals that they had to be suppressed. The structure of the grips, the electrodes and the spacing and the circuits. Everything. All old.

                Everything in the claim was old and old in combination. There was nothing new there save one thing and that was the requirement that the unwanted signals be balanced.

                During prosecution, the patentee argued that one of ordinary skill in the art would recognize that one would have to adjust the spacing of the grips in order to balance out the unwanted signals so that they could be canceled out at the differential amplifier. But none of that was in the spec. None of that was in the claim. But that was the claim construction of the Federal Circuit.

                So. If one is doing everything in the specification and the claims, one is doing nothing but what is in the prior art. And yet one infringes if the signals balance. It makes no difference how one makes the signals balance, it is a fact that they are balanced which makes it infringing.

                Something is very very very very very very very very very very very wrong with this case.

                1. Ned, your post is non-responsive. Not only that it is wrong. I just pulled part of the claim out that would be an element that you would not meet with your invention.

                  I see your tactics have not changed. Your responses become less and less on point and until you try to bail out of the thread without admitting defeat.

                  Face it, you have no argument. You did not address how to claim the many solutions without functional language. You did not address the fact that real inventors use functional language to describe the set of solutions they have invented.

                  But, I am sure you will continue with your nonsense in the next thread. I can’t imagine anyone finding your arguments persuasive. I think you are like the climate deniers. You figure if you just keep fighting that it will put up something of a smoke screen that is worth something.

                  Let’s face it Ned, this functional claiming position of yours is anti-patent judicial activism. That is what you are.

        2. 13.1.1.2

          Ned –

          Is this claim so broad as to capture independent inventions of others that accomplish the same result ?

          7. A method of making a Martini, the method comprising:
          adding an effective amount of ice to a container selected from one, two, three, four and five parts;
          adding five parts of vodka to the container;
          adding an effective amount of vermouth to the container selected from about 1 part to about 3 parts; and
          mixing the contents of the container.

          It claims the process does it not? It is not claiming the result is it? It is claiming the process isn’t it?

          And yet, if in three years JB comes along and invents a method of making a martini that specifically includes shaking the contents of the container (not merely “mixing”) the contents…. what of poor JB?

          Will his progress be retarded?

          Not necessarily. JB can pay me a royalty, shaking being a form of mixing after all…but JB can go ahead an patent his method, if shaking isn’t an obvious method of mixing…

          1. 13.1.1.2.1

            Oh…. and before any infringers claim that there are many ways to measure parts and therefore my claim is indefinite, parts are measured by volume.

          2. 13.1.1.2.2

            Les, are you deliberately trying to ignore what I have been saying?

            Step 1, What it the invention?

                1. You see no problem?

                  But “mixing” attempts to claim all forms of mixing, included undisclosed methods of mixing and methods of mixing that are invented in the future!

                  Doesn’t “mixing” merely attempt to claim a result (mixed fluids) ?

  2. 12

    Jason: There are two big categories of indefiniteness arguments: the argument that the claim element cannot be construed and the argument that even when the element is construed, it is still not possible to determine whether it is met by the accused product. Biosig is arguably a species of the former: that the claim term could not be construed, while Dow is the latter: the words of the claim can be construed, but it’s not possible to know whether they are met.

    Indefiniteness issues will present themselves differently … but it’s still indefiniteness. That shouldn’t suprise anyone. At the end of the day, the question remains whether the words in the claim are sufficiently definite. A claim element which comprises a nonsense word without definition is going to be slam dunk. Likewise with a claim riddled with internal contradictions or multiple instances of references to elements lacking antecedent basis. Then there are the indefinite claims where a limitation could be fairly construed to mean A or B (but not both) and no justifiable means for determining which is correct.

    I believe this last example would fall into the second category identified by Jason. I think Jason’s choice of words is confusing, however. In the example I described, it’s true that the claim limitation makes sense but I don’t agree with Jason that the “words can be construed” in the legal sense of the term “construed.” It would be more accurate and less confusing, I think, to say that the “words can be understood” but are not susceptible to a definite construction (and the claim is therefore indefinite).

    I believe there is another important flavor of indefiniteness closely related to this second category. That is the situation where (1) the words of the claim can be understood unambiguously and (2) it is theoretically possible to determine whether the claim is infringed BUT, (3) as a practical matter, making that determination places too great of a burden on the public (specifically, potential infringers).

    For example, consider a claim that recites a widget, wherein the widget is characterized by a defined property whose measurement requires $10 million dollars of investment in materials, three years of tech labor and the use of machinery that exists only in Sweden or conditions that exist only in a particular space station. Is that a “definite” claim as that requirement is intended by the patent statute?

    1. 12.1

      MM, the widget example is Perkins Glue:

      “Perkins’ second way of describing the starch ingredient of his product was in terms of the use or function of the product itself. The chosen starch ingredient was to possess such qualities that when combined with three parts of water and with alkali it would produce a product “as good as animal glue” for veneering, or having the properties of animal glue, these properties being described in terms of its functions. The ingredient was thus described, not in terms of its own physical characteristics or chemical properties or those of the product, but wholly in terms of the manner of use of the product. Any glue made of a starch base, whatever its composition, water absorptiveness or other properties, combined with three parts of water, as is animal glue used in veneering, and with alkali, which has substantially the properties of animal glue, or is as good as animal glue for use in the wood-working trades, is claimed as Perkins’ glue. Thus the inventor who advances the art by discovery that a certain defined material may be combined in a product useful for certain purposes seeks to extend his monopoly to any product which may subsequently be made from materials not within any defined range described in the patent, but which is likewise useful for those purposes.

      But an inventor may not describe a particular starch glue which will perform the function of animal glue and then claim all starch glues which have those functions, or even all starch glues made with three parts of water and alkali, since starch glues may be made with three parts of water and alkali that do not have those properties…

      One attempting to use or avoid the use of Perkins’ discovery as so claimed and described functionally could do so only after elaborate experimentation. Respondents say that laboratory tests would be insufficient and that “the best and probably the only satisfactory test is to try it out on a large scale in a furniture or veneering gluing factory.” A claim so broad, if allowed, would operate to enable the inventor who has discovered that a defined type of starch answers the required purpose to exclude others from all other types of starch and so foreclose efforts to discover other and better types. The patent monopoly would thus be extended beyond the discovery and would discourage rather than promote invention…”

      1. 12.1.1

        Ned, unquestionably the decision in Perkins Glue reflected similar underlying policy concerns. Thank you for the cite. But …. it’s not the situation I was thinking of so let me clarify.

        Consider the case where the problematic limitation is not a function or a result of the claimed invention, but rather a physical/structural value (e.g., “length”) of a constituent element that is described by reference to an unambiguous measurement technique. Now we’re out of the Perkins Glue situation and we’re out of the Dow v. Nova situation. But I don’t think we’re necessarily free from indefiniteness problems if, as I suggested above, determining infringement according to the stated measurement technique places too great a burden on the public (specifically, potential infringers).

        1. 12.1.1.1

          I’m with MM here. Take the tech area of microstructures of alloys, for example. The problem he writes about arises frequently here.

          Suppose the alleged contribution to the art is enhanced mechanical property for articles made from the alloy. The inventor attributes it to a particular microstructure. Fair enough. The inventor in the patent application as filed provides a worked Example of an alloy that delivers, and a Comparative Example, with different process conditions, of one that doesn’t. The claim defines the microstructure using defined parameters. Again, all fair enough.

          But it turns out that, to measure the parameter, you need access to a particular machine, built and operated by the university just down the road from Applicant’s R+D facility and sponsored by them.

          You could try building (think years, millions of USD) your own machine, to measure the parameter defined in the claim. You could build it and you could get some numerical data out of your machine. But could you rely on your numbers to determine whether or not you infringe? How close to the numbers on their machine do your numbers (delivered for the same workpiece by your machine) have to be, before the claim is deemed not to be “indefinite”?

          There is a complete branch of EPO caselaw on this topic. I know the answer for EPC-land. But what is the answer in the USA? Definite or indefinite?

          1. 12.1.1.1.1

            The question is flawed.

            The ability re: cost/difficulty has NOTHING to do with whether the item, for which those factors apply, is or is not “definite.”

            You have somehow moved the question from “is it definite?” to “Is the method of determining whether or not it is definite is widely and easily accessible?

            Such a question simply is not contained in US law.

            1. 12.1.1.1.1.1

              Ned, MM, suppose you and I both make stent delivery catheters. They are about 130 cm long and about 6 French in outside diameter. No doubt what “French” means. Every skilled person knows that. Every skilled person who measures the diameter will get the same result

              But my claimed catheter outperforms conventional ones because it has a better ratio of pushability/torquability relative to bendability. My claim includes a threshold number for that ratio and my (“Instron” if you are the CAFC writing this month’s featured Decision) test machine proves that your catheter is an infringement because it has that ratio. Anybody can measure the ratio but everybody will use a different machine and test procedure so everybody will get different numbers.

              Your non-infringement defence is that you lack that ratio, but that’s a bit risky cos your catheter does actually perform better than conventional catheters and comparably to mine, largely because it uses the same (obvious) combination of polymer layers in the catheter shaft that I use. Do you have a better indefiniteness defence though, given the hoary old presumption that my duly issued patent is NOT invalid?

              In other words, whatever I spuriously spout about magic ratios, does my claim de facto monopolise all enhanced performance stent delivery catheters?

              1. 12.1.1.1.1.1.1

                You lost me (logically) at:

                does actually perform better than conventional catheters and comparably to mine, largely because it uses the same (obvious) combination of polymer layers in the catheter shaft that I use

                How can there be a difference given this fact pattern of no difference?

  3. 11

    Someone once wrote:

    Combination claims with elements described in terms of what they do have long been recognized as apt. Such claims provide an inventor with flexibility to claim what she regards as the invention. Terms that define what the element does may provide a way to claim the invention in cases where structural terms are unnecessarily cumbersome or inadequate. Also, the broad coverage afforded by functional terms allows the courts to resolve infringement issues without extending patent protection beyond the scope of the literal claim.

    However – and this is HUGE – that person misunderstood the Act of 1952 in its freeing of the use of terms that sound in function.

    Congress did NOT just free up the use of terms sounding in function ONLY in what is now 112(f).

    To think so is clear legal error – as can be readily seen by the reading of Federico (and has been pointed out to Ned in my discussions with him).

    If one forever and a day clenches tight their eyes to the law, even when it is shown to them, why should everyone else be made to suffer the ad nauseum ad infinitum monologues of the “I can’t see that” variety of Ned Heller?

    1. 11.1

      (pssst: there is a Vast Middle G of fully and rightfully legally proper claims – combination claims – that use both structure and terms sounding in function)

      1. 11.1.1

        – that should read Vast Middle Ground

        but everyone that reads the blog already knows that (even as some same ones will attempt as usual to dissemble on that clear legal point….

      1. 11.2.1

        10x wrong is just wrong Ned.

        Faulkner, a 1940’s case, is inopposite to the law changes that were enacted in 1952.(yes, by Congress and as noted by Federico – as I have shown you in detail in discussions past, at least 10x – and my 10x is 10x correct)

        You keep on thinking wrongly that you are in the middle of the law when you are instead deep in the weeds.

        1. 11.2.1.1

          anon, but Faulkner represents my views. It might be important to consider the case for our discussions.

          1. 11.2.1.1.1

            “might” be important…?

            Ned – let’s stick to real law and not your fantasies, ok?

            1952 really did happen.

            You need to come to grips with that. All of that.

  4. 10

    The question is whether the existence of multiple methods leading to different results without guidance in the patent or the prosecution history as to which method should be used renders the claims indefinite.

    Halliburton, is that you?

    I’ve directly stated this several times with respect to functionally claimed computer code. Glad to see the fed cir is catching on (after the Supremes set them right). Still waiting for a software case to nail it home.

    1. 10.1

      If I ask you to stir the contents of a pot, does it matter that I don’t specify which kind of utensil to use?

  5. 9

    There’s a portion of the “thoughts on the opinion” that I don’t understand.

    “One way to think about Nautilus is that it’s really about figuring out the meaning of words in the claim, whereas this case and Teva are really about how to determine whether those words, with their meaning understood, are met.”

    Are met by what? By an infringing device/method? Or do you mean, how to determine how those words are supported in the spec? Thanks for any help.

    1. 9.1

      There are two big categories of indefiniteness arguments: the argument that the claim element cannot be construed and the argument that even when the element is construed, it is still not possible to determine whether it is met by the accused product. Biosig is arguably a species of the former: that the claim term could not be construed, while Dow is the latter: the words of the claim can be construed, but it’s not possible to know whether they are met.

      1. 9.1.2

        Perkins Glue, seems Jason, like a very good example of a claim that could be construed but was held indefinite nevertheless because one could not figure out whether one infringed until one actually made the claimed invention and even then the criteria was ambiguous.

        This whole idea that if it works it infringes is ridiculous, which is the idea given to us by the Federal Circuit in the Nautilus remand.

        Such is claiming a result.

        1. 9.1.2.1

          Ned, I work in engineering, not chem/bio. My eyebrows went up, at your mention of “ridiculous”.

          So, help me will you, in the situation where I don’t know what will work till I have tried it.

          I have a molecule X that exhibits some useful medical activity and I want to claim it. I am told that there are some substituents that “work” and some that don’t.

          I can’t limit the Claim to X. Too easily worked around.

          I can’t limit the Claim to X plus a recital of the individual substituents that work cos I don’t know them yet.

          I cannot Claim X plus a functional limitation to the substituents that work cos that’s indefinite.

          So how does one claim, to cover all that is commensurate with my contribution to the art? What is best practice? What will I get away with? What support do I need, in the specification, to get the broadest achievable Claim, in my straitened circumstances?

          1. 9.1.2.1.1

            My bark here is claiming a result. Thus in, “I have a molecule X that exhibits some useful medical activity” How do you claim it? The way people who do things in America are taught is this:

            1. A class of molecule that includes X that achieves “name the useful medical activity.”

            In the claim at bar, the mechanical aspects of the composition are claimed, not what it is. Thus, the claim covers any and all compositions that achieve that result without limit, and I presume the inventor did not describe or enable every single molecule that achieved the claimed result.

            Huh?

            1. 9.1.2.1.1.1

              MaxDrei was not asking you what you are complaining about, Ned.
              MaxDrei was asking you for a solution.

              1. 9.1.2.1.1.1.1

                Neds solution is, if you don’t know it works, you didn’t invent it, so don’t claim it. Claim X and the substituents you know work.

        2. 9.1.2.3

          Ned –

          Don’t chemical/drug administering claims regularly recite “an effective amount”?

          Isn’t that “if it works it infringes”?

          1. 9.1.2.3.1

            the chem/pharma patent claims have other (rather serious) problems as well:

            how exactly is a range an “objective physical description”…? An item “is” or “is not.” Claiming a range is a type of abstraction that runs directly counter to the “holy grail” of “objective physical structure” per single invention.

            given the rather large number of drugs that fail to have the professed utility (desired utility?) during FDA testing,

            well after

            the application has been filed, can it be really said that the applicants – in gen eral – possess the utility at the time of filing for any pharma patent?

            After all, that having utility is every bit a part of 101, is it not? Where is all the clamor about that…?

            1. 9.1.2.3.1.1

              …and another… why are not the chem/pharma items completely described? After all, if “objective physical structure” is the meaningful litmus test, why should an applicant be able to obtain a patent on a partial “objective physical structure?

          2. 9.1.2.3.2

            Les, I don’t know why they do that — there must be case law. But the invention certainly is not in the effective amount.

  6. 8

    The problem I had with Nautilus on remand was that the Federal Circuit continued to ignore the problem functional claiming. Any spacing that actually worked is what was claimed and that was held not to be indefinite. Henceforth, no one could not avoid infringement even if one balanced the signals by using techniques other than spacing because any spacing infringes.

    Thus we have the vice of functional claiming.

    Historically the Supreme Court said that functional claiming made the claims indefinite because such claims did not particularly point out and distinctly claim the invention, but instead claim a result. However, it appears we have to attack functional claiming from a different point of view. Perhaps 101?

    1. 8.1

      This blog has become just a forum for the anti-patent movement. Shameful that it comes from academics.

      1. 8.1.1

        Night, consider you are building exercise machines. You provide grips with equally spaced electrodes on all. You balance the unwanted signals by using a special grip material that automatically provides gain to the unwanted signals so that they are equal when input to the differential amplifier.

        You are accused of infringing? Why? Because the signals are balanced.

        What say you?

            1. 8.1.1.2.1.1

              Ned,

              You basically have two options either you are an improvement patent or you can invalidate a claim that is too broad in that the scope of enablement includes non-obvious solutions that arose later. This is how real patent law deals with these issues.

              This railing against functional claiming has no basis that I can see in real invention or real problems that I have dealt with in litigation or prosecution. It appears to me to be another example of a witch word creation. You know, I have cited real technical references books that say expressly, the functional language used is meant to convey the known solutions and obvious variants.

              This appears to me to be just another example of judicial activism with endless nonsense and abstract discussions that have nothing to do with real inventions or real litigation.

              (As a side note Ned, I was fascinated in attending a seminar about product liability because the D’s said about all the stuff we hear about patent D’s. And, the grown-ups who had 30 years of litigation experience spoke of fixing the problems –same ones we hear about in patents–through things like changes to discovery rules.)

              To my mind, all of this madness against patents is being driven by K street and the fact that the Fed. Cir. is so specialized that lobbyist like Google can focus on single issues like patent law in the appointment of judges that is why we have the likes of Taranto.

              Anyway, real patent attorneys think in terms of scope of enablement. That is reality. Lemley should not be mentioned or cited until he discloses how he is protecting the IP in his start-up. If the answer is draconian employment contracts, then Mark Lemley should be forever wiped off the face of patent law.

              1. 8.1.1.2.1.1.1

                Night, you will note that I have consistently supported functionally claiming old elements, while objecting to claiming “the invention” as a result. I am quite sure that you will find nobody else arguing this distinction when talking about functionally claiming. Yet the distinction is critical and is well supported the Supreme Court case law.

                Regarding software, I have consistently maintained that software is described in a series of steps, and are essentially processes regardless of how they are claimed. Because they comprise a series of steps, they describe a series of actions. This is completely acceptable in the law. The attack on software to the extent appears to be claiming structure using process steps is wholly misplaced because claiming a series of acts in fact is the way one claims a process.

                The Nautilus claims can be attacked on the basis of lack of enablement. But they certainly can also be attacked on the basis that they were claiming structure, mechanical or electrical structure, not in terms of what they were, but in terms of the results they achieved. That is classically claiming a result which has been forbidden by the Supreme Court case law since 1852. It is not simply a matter of enablement. Is per se illegal – meaning it is probably a 101 issue.

                1. Ned,

                  you have consistently shown a lack of understanding of what happened in 1952 vis a vis Congress opening up the use of terms of function.

                  Prof. Crouch penned a dedicated thread to the Vast Middle Ground.

                  You continue to ig nore this entirely.

                  We had a discussion of Federico and 112 – ALL of 112, for which I showed that terms of function were unleashed by Congress in the Act of 1952 – and done so NOT ONLY in what is now 112(f).

                  You continue to ig nore this entirely.

                  How do you expect ANY conversation not to devolve into the usual competing monologues when you refuse to accept what actually happened in 1952?

                2. And yes, I will add that the editor of this blog does no one any favors with the selective editing of comments that seeks clarity and a FULL dialogue on this matter, while carelessly giving full reign to those who would employ an Internet shout down model of ad nauseum ad infinitum repetition of points that are clearly flawed.

                  But, hey, America;’s leading source of something and all that….

                3. Ned>>>>they were claiming structure, mechanical or electrical structure, not in terms of what they were, but in terms of the results they achieved.

                  That is right and that is the proper way to claim an invention in modern times. The specification then includes examples of actual structure and the claims are referring to the set of solutions that are enabled to a POSITA in view of the claims and the spec.

                  That is the ONLY way it is possible to claim the invention in MODERN times.

                  Your position is obviously another witch hunt anti-patent position that is using a witch word “functional” without contextualizing the word within patent law.

                  Disgusting.

                4. And Ned, how about you tell us how the Nautilus claim should have looked?

                  You see, your kind is not about reality, but fabricating witch words. Real patent attorneys see right through your nonsense because we think in terms of claims and elements in the content of the invention–you know reality.

                  So, Ned, how about some reality. Let’s see you claim Nautilus that will capture what the inventors really did. Oh, you can’t do that. Oh, gee, I wonder why. Because your nonsense is not grounded in reality.

    2. 8.2

      Claim 1 of the 6,111,023 patent is the following. At issue was the element (A)(iii) (“a slope of strain hardening coefficient greater than or equal to 1.3”).

      In what way is this element “functional claiming”? Or are you saying that Nautilus concerned that issue? Or are you just so against functional claiming that you bring up this issue randomly, for cases having nothing to do with functional claiming?

      1. An ethylene polymer composition comprising

      (A) from about 10 percent (by weight of the total composition) to about 95 percent (by weight of the total composition) of at least one ethylene interpolymer having:

      (i) a density from about 0.89 grams/cubic centimeter (g/cm.sup.3) to about 0.935 g/cm.sup.3,

      (ii) a melt index (I.sub.2) from about 0.001 grams/10 minutes (g/10 min.) to about 10 g/10 min.,

      (iii) a slope of strain hardening coefficient greater than or equal to 1.3, and

      (iv) a Composition Distribution Branch Index (CDBI) greater than 50 percent; and

      (B) from about 5 percent (by weight of the total composition) to about 90 percent (by weight of the total composition) of at least one ethylene polymer characterized as having a density from about 0.93 g/cm.sup.3 to about 0.965 g/cm.sup.3 and comprising a linear polymer fraction, as determined using a temperature rising elution fractionation (TREF) technique.

      1. 8.2.1

        In what way is this element “functional claiming”?

        The strain hardening graph is not a straight line. There isn’t one way to measure the slope (such as rise over run for a straight line), there are multiple distinct means of measuring the slope that the art would appreciate. When you only claim the end result (determining a measurement) absent nominating a technique to achieve the result, you are claiming functionally because you mean to encompass each of the distinct techniques that achieve the result. Consequently even though (A)(iii) appears to be an intrinsic characteristic, it is actually a functional result. It would be easier to see if you broke it into its constituent parts –

        (iii)(a) performing a technique that achieves the function of extracting a slope from a strain hardening graph
        (iii)(b) determining that the extracted slope is greater than or equal to 1.3

        (iii)(a) is the problematic function.

        1. 8.2.1.1

          Random, I thought from Perkins Glue we learned that one should not claim a composition in terms of its properties.

          The first question I had when I read the list of properties of this ethylene interpolymer is this: does the specification tell one how to make such a product and if so why wasn’t that claimed instead?

        2. 8.2.1.2

          How about this as a claim element

          attaching arm A to plate B;

          Is that functional claiming?

          How about

          screwing arm A to plate B

          or

          bolting arm A to plate B

          Are those functional claiming?

          What about

          screwing arm A to plate B with at least one 10 x 32 screw.

          Is that functional claiming? Doesn’t it attempt to capture the use of all 10 x 32 screws?

          What about

          screwing arm A to plate B with at least one stainless steel 10 x 32 screw.

          Doesn’t it attempt to capture the use of all stainless steel 10 x 32 screws?

          What about

          screwing arm A to plate B with at least one 1.5 inch stainless steel 10 x 32 screw.

          Doesn’t it attempt to capture the use of all 1.5 inch stainless steel 10 x 32 screws?

          What about

          screwing arm A to plate B with at least one Philips head 1.5 inch stainless steel 10 x 32 screw.

          Doesn’t it attempt to capture the use of all Philips head 1.5 inch stainless steel 10 x 32 screws?

          What about

          screwing arm A to plate B with at least one counter sunk Philips head 1.5 inch stainless steel 10 x 32 screw.

          Doesn’t it attempt to capture the use of all counter sunk Philips head 1.5 inch stainless steel 10 x 32 screws?

          1. 8.2.1.2.1

            Claiming the invention as a result is the vice.

            Take the screw. Assume the inventor discovered that changing the pitch on the threads not only provided an attachment function but prevented the screw from being unscrewed except if twice the screwing torque is used.

            1. A screw that requires at least twice the torque to unscrew as to screw.

            2. A screw that requires twice the torque to unscrew as to screw.

            Competitor develops a constant pitch screw where the height of the thread is varied. This too resists unscrewing to the same degree.

            Does it infringes? Of course it does because the claim literally reads on competitor screw.

            See the problem yet?

            We had the problem with the disk invention where the magneto resistance was increased by a particular structure. Rather than claim the structure, the claim claimed the particular magneto resistance. Thus any structure that achieved that resistance was an infringement.

            We had what was known as form factor patents in the disc drive industry where patents issued claiming particular track densities, disk diameters, housing sizes where the disclosed invention was technology that allowed one to achieve these performance metrics. The PTO kept issuing them causing a patent war in the disk drive industry where only patent attorneys and litigators benefited. There was no real case of copying the technology disclosed in any of these patents.

            Claiming results is taught to patent attorneys centered in DC and here in Silicon Valley. It is an abuse of the patent system. I would favor the PTO clamping down in some fashion by not only rejecting applications that claim results, but suspending the license of any attorney who claims the invention as a result until that attorney passes test where he can prove that he can claim an invention without claiming it as a result.

            1. 8.2.1.2.1.2

              I can’t claim the process (attaching) without the hardware?

              Then what does it mean that processes are patent eligible?

              1. 8.2.1.2.1.2.1

                Ned has been more than clear that he views processes as a mere sub-category to the “hard goods” categories.

                He is quite legally wrong about that, but he does own that position (while not being willing to discuss it, of course)

            2. 8.2.1.2.1.3

              Lol – Ned and his bias comes from “form factors.”

              Tell me Ned – was that the last time you wrote an application?

      2. 8.2.2

        PatentBob, is the principle of Perkins Glue that one cannot claim a composition in terms of its properties or something else?

    3. 8.3

      Ned,

      I think what tends to get used for that is the enablement issue – particularly the “full scope” doctrine.

      I still don’t think the line between means/technology and “result” is always so crisp, especially since every claim requires at least some generalization, but in view of your dislike of functional claiming in any event – do you think than one can/should get any broader claims for a method of using a novel widget versus the widget itself?

      In other words, if I invent the first thing ever than can do X, you’d say that I cannot simply claim “anything that does X.” But, do I perhaps have more room to claim “any method of using something that does X (to achieve Y)?” After all, it’s easier to “enable” the method-of-use more broadly, particularly if how a given thing actually works inside has little impact on how an operator uses or interacts with it.

      I suppose this argument may only work for enablement, however, and not if you’re using 101 instead for the attack.

    4. 8.4

      Ned –

      Don’t chemical/drug administering claims regularly recite “an effective amount”?

      Isn’t that “if it works it infringes”?

      Of course people could avoid infringing. Don’t measure those signals!

  7. 7

    Jason: I’d expect that in future cases knowledgeable counsel will make sure that there’s good support for the particular measurement methodology used by their experts, with the experts also providing support for the proposition that their methodology is the one that a PHOSITA would have used.”

    This seems to get to the heart of a long-standing problem with manner in which claim construction disputes are resolved during litigation, one that I think both the Supreme Court and the CAFC are focused on fixing. The paradigm is that if there is a dispute between the meaning of a term each side puts a hired “expert” on the stand to recite a script about how a PHOSITA would have understood the term as of the filing date. The party with the “expert” who is more “persuasive” wins the debate.

    It seems to me a better scheme, at least in some circumstances, would be for district courts to retain trained pollers who, with the advice and consent of the parties, obtain the answer directly from a pool of ordinary artisans. The pool of ordinary artisans is presented with the relevant facts and asked to choose the best answer between three options: the competing constructions offered by the parties and “unclear.” After that data is obtained, the experts can testify as to why the data should be ignored. But at least there would be a bona fide attempt to obtain an objective answer to the key question rather than choosing between the scripts of just two paid talking heads.

        1. 7.1.1.1

          Judges have to either accept the parties’ constructions or come up with their own. What they can’t do is say there is no construction because the claims are indefinite. So that’s a great point Malcolm.

          But the more efficient way to fix it would be to deal with 112 issues before the case even gets to the jury.

          1. 7.1.1.1.1

            topce, I think you present a false dichotomy here that the court must construe the claims. How is this possible if the claims are indefinite?

            Examiners run in to this all the time during prosecution when they don’t know what the claims mean and so they don’t know what to search. Under compact prosecution, they can’t simply say the claims are indefinite and required appropriate amendment before they conduct the search. That would make too much sense.

            1. 7.1.1.1.1.1

              “Examiners run in to this all the time during prosecution when they don’t know what the claims mean and so they don’t know what to search. Under compact prosecution, they can’t simply say the claims are indefinite and required appropriate amendment before they conduct the search. That would make too much sense.”

              Yea tell me about it.

              But I am saying that part of construing the claims would be to say the claims are not capable of being construed–aka–indefinite.

              1. 7.1.1.1.1.1.1

                The court is required to construe the claims during markman. They can’t declare the claims indefinite until afterward right?

              2. 7.1.1.1.1.1.2

                tocpe, I think hat is what the courts are doing in fact. If they find a claim is indefinite, they say so without construction.

          2. 7.1.1.1.2

            Re: “Judges have to either accept the parties’ constructions or come up with their own. What they can’t do is say there is no construction because the claims are indefinite.”

            Why would judges have to come up with any claim construction to decide the case on a S.J. of indefiniteness?
            Also, if I remember correctly, some PTAB judges [APJs] have refused to decide IPRs because of claim indefiniteness.?

      1. 7.1.2

        A jury is explicitly NOT composed of PHOSITA…

        MM’s idea is interesting, but would be super expensive and prone to all kinds of gaming without strong (e.g. expensive) controls.

        OTH, it could be a good business area for the established polling companies in election off-years ;-)

    1. 7.2

      trained pollers who, with the advice and consent of the parties, obtain the answer directly from a pool of ordinary artisans.

      What a non-sense non-answer….

      All Malcolm has done is added a layer of bells and whistles and moved “the expert” label to a different deck chair.

      Just look at how “well” the “polling” answer works in trademark cases with each circuit having their own “flavor.”

  8. 6

    Excellent analysis, Jason.

    I agree that that the CAFC appears to be on the right track at last. The earlier decision in this case, where the claims were deemed definite in spite of the applicants failure to teach how one would measure a key parameter recited in the claims, was a poster child for everything that was wrong about the CAFC’s toothless and nullifying “insolubly ambiguous” standard.

    Nautilis may have lost its battle with Biosig, but it won the war to bring a functioning definiteness requirement back into the system.

    For a nice write-up of how Nautilis has been playing in one district (Delaware) see: link to iplitigationcurrent.com

      1. 6.1.1

        I know this wasn’t directed towards me but I’m an examiner in the chemical art and don’t get me started. I see it allllll the time.

        It’s part of the whole functional claiming trend.

        1. 6.1.1.1

          TOCPE, we recently had a case involving a magnetic disk having a structure that provided certain resistance to movement under the influence of magnetic fields. Rather than claiming the structure , the patent claimed the degree of resistance achieved by the structure, and not only did that, claimed all degrees of resistance above a certain number.

          The court struck down the claim as not enabled for its full scope.

          But the real problem all along was that the claim was not claiming the invention, it was claiming the effect or result of something else that was inventive. This practice has been condemned by the Supreme Court since the days of Le Roy v. Tatham. And yet, not only does the patent office allow it to occur, but the Federal Circuit as well?

          The Supreme Court in Perkins Glue held that one could not claim a composition in terms of its properties or effects. Such claims were determined to be indefinite by the Supreme Court.

          How is this rule not applicable today?

          1. 6.1.1.1.1

            That case is bizzarely not in the MPEP.

            The logic behind allowing these types of claims is that in light of the spec, if one could narrow it down to a set of compounds then the claim is broad but still definite.

            This is what the MPEP says in 2173.05(t)

            A claim to a chemical compound is not indefinite merely because a structure is not presented or because a partial structure is presented. For example, the claim language at issue in In re Fisher, 427 F.2d 833, 166 USPQ 18 (CCPA 1970) referred to a chemical compound as a “polypeptide of at least 24 amino acids having the following sequence.” A rejection under pre-AIA 35 U.S.C. 112, second paragraph, for failure to identify the entire structure was reversed and the court held: “While the absence of such a limitation obviously broadens the claim and raises questions of sufficiency of disclosure, it does not render the claim indefinite.” Chemical compounds may be claimed by a name that adequately describes the material to one skilled in the art. See Martin v. Johnson, 454 F.2d 746, 172 USPQ 391 (CCPA 1972). A compound of unknown structure may be claimed by a combination of physical and chemical characteristics. See Ex parte Brian, 118 USPQ 242 (Bd. App. 1958). A compound may also be claimed in terms of the process by which it is made without raising an issue of indefiniteness.

            This is all absurd of course, but it is what it is.

            1. 6.1.1.1.1.1

              I certainly don’t think Fisher is “absurd” and I don’t think you’d find many others who do.

              Fisher stands for the reasonable proposition that if you invent and claim a novel, non-obvious and useful structure, where you describe that structure in objective structural terms (as Fisher did), the claim is not indefinite per se merely because it uses open-ended language.

              On the other hand, this: A compound may also be claimed in terms of the process by which it is made without raising an issue of indefiniteness

              is a bit misleading because after Abbott v. Sandoz (2009) such product-by-process claims must be construed as method claims for infringement purposes (and should be construed both as method and composition claims for the purpose of determining validity). In effect, the CAFC in Abbott mooted the huge “indefiniteness” issue presented by such claims by severely limiting the manner in which they could be enforced. Definitely one of the better opinions that Rader wrote (written before he was made Chief Judge).

              1. 6.1.1.1.1.1.1

                The case is not absurd the fact that it is the only paragraph in the MPEP on the subject is. Especially in light of cases Ned mentioned above

          2. 6.1.1.1.2

            “and not only did that, claimed all degrees of resistance above a certain number.

            The court struck down the claim as not enabled for its full scope.”

            Exactly what I was thinking might happen as soon as I read the former statement. Such a no-no.

        2. 6.1.1.2

          I’m an examiner in the chemical art and don’t get me started. I see it allllll the time.

          Whaaaat?

          I thought that was a “grown-up” art…?

          1. 6.1.1.2.1

            Yea I don’t agree with Malcom that the problem is isolated in information processing field.

            Too many patents in general. Too many language games. What about just claiming what you invented.

            Greed everywhere.

  9. 5

    “The weird tension about indefiniteness being a question of law but involving factual determinations remains. Here, the issue was originally tried to a jury (probably erroneously as the Federal Circuit implied in the original Dow opinion), and the Federal Circuit’s analysis here focuses less on interpreting the text of the claims and more on identifying which measurement methodology a PHOSITA would have picked (which sounds like a factual question to me). Regardless of this tension, I’d expect that in future cases knowledgeable counsel will make sure that there’s good support for the particular measurement methodology used by their experts, with the experts also providing support for the proposition that their methodology is the one that a PHOSITA would have used.”

    This seems like JNOV to me–aka–a legal determination. It seems like the fed. cir. is saying that based on the expert’s testimony, no reasonable jury could have found that a PHOSITA would have been adequately informed as to claim scope.

    1. 5.1

      To be more precise, the fed cir, reviewing the legal determination of the Dist. Court judge de novo, determined that the judge should have issued a JNOV in light of the experts testimony.

  10. 4

    This case shows the absurdity of the “insolubly ambiguous standard” if it wasn’t already absurd on its face.

    Look at footnote 8. They didn’t even provide units!

    Dow admitted that they made up their own term. They didn’t adequately define it in the spec—that seems pretty clear cut to me. But the Federal Circuit ruled this case the other way pre-Nautilus. How??

    The Federal Circuit needs to be abolished. They have consistently botched the law. 101, 103 and now 112. What is their purpose anymore. We would be better off with judges with common sense deciding these cases than these so called “experts”

    1. 4.1

      The Federal Circuit needs to be abolished. They have consistently botched the law

      They didn’t botch it this time. An optimist might look at this decision as a key part of a series of necessary corrections of misguided decisions from an earlier era.

        1. 4.1.1.1

          “An optimist might look at this decision as a key part of a series of necessary corrections of misguided decisions from an earlier era.”

          The final correction being the abolition of the court that made those decisions.

    2. 4.2

      It’s funny that even patent prosecutors were scratching their heads at these units (and validity) when the original panel came out.

      link to alleylegal.com
      other unit selections (even staying wholly within the English system) could get close enough to the 1.3 value to make someone skilled in the art believe they were using the correct units. This would be especially likely if one chose a lower slope value in the strain hardening region that masked any incorrectly-chosen units. In sum, I think there’s just too many ways a person could reasonably calculate the novel SHC parameter and get close to the claimed limit and wrongly believe they avoided infringement under the court’s construction of SHC.

      Maybe the law didn’t change so much as the original panel got it wrong under any standard?

      1. 4.2.1

        I agree with that. Or the old standard was absurd and gave judges way too much wiggle room to give patent holders the benefit of the doubt.

  11. 3

    Nice writeup, Jason. Judge Dyk seems to be saying that “indefinite” is not the same as “indeterminable.” Seems reasonable to me.

  12. 2

    There is no hint of mere Supreme clarification in this opinion

    Once again – what is the difference between law writing and interpreting…?

    1. 2.1

      …or is the elephant in the room of the wayward treatment of statutory law not something that academia wishes to acknowledge…?

      1. 2.1.1

        OT but, I attended a seminar on product liability litigation. Remarkable how similar the complaints are about product liability litigation and patent litigation. One thing that was interesting was a discussion how to the new rules of civil procedure should mandate that judges limit discovery costs in proportion to the potential liability. Probably not saying that quite right.

        But, it seems in patent litigation that 1) a lot could be learned from product liability, and 2) that discovery that had different phases with the first phases focusing in on validity and infringement would do a lot to lower the d’s cost.

        1. 2.1.1.1

          And it is a bit related to the post in that discovery could have a phase that specifically focused on claim construction.

  13. 1

    the Court “modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’”
    You fail to appreciate the irony in Judge Wallach’s comment. Both “standards” are subjective yet one is a “bright star” and the other an “unreliable compass.” Good luck divining a meaning for either.

      1. 1.1.1

        You’re not alone, Les.

        I like The Oatmeal‘s take on irony:

        theoatmeal.com

        (Note to site administration: what happened to the list of recognized markup tags that previously accompanied the “Leave a Reply” dialog? Another casualty of the server move? Or is it just me?)

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