Nautilus v. Biosig (Supreme Court 2015) (SCOTUS ROUND II)
In Nautilus (2014), the Supreme Court significantly heightened the standard for definiteness in patent cases – now requiring that claim scope be delineated with “reasonable certainty.” Previously, the Federal Circuit had only invalidated claims that were both “insolubly ambiguous” and not amenable to construction.
On remand, the Federal Circuit took-in the new standard, but again ruled that the “spaced relationship” limitation in Biosig’s patent was not problematic. That decision (and a series of others) have suggested that, despite the Supreme Court decision, indefiniteness is still a very tough-sell in infringement litigation.
Now, the case again has been petitioned to the Supreme Court. Nautilus asks two questions:
… To perform [its] public-notice function, a patent claim must be clear the day it issues. This Court accordingly rejected the Federal Circuit’s post hoc “amenable to construction” standard: “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.” But, the remand panel again did the opposite. It copied and pasted much of its opinion this Court had vacated. It did not even mention the original prosecution history. Instead, it again viewed the claim post hoc in view of statements made in Patent Office proceedings 15 years after the patent issued. And, it again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity. The questions presented are:
1. Is a patent claim invalid for indefiniteness if its scope is not reasonably certain the day the patent issues, even if statements in later Patent Office proceedings clarify it?
2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?
The petition has been supported by two amici filings. The first filed by a group of operating companies – including Garmin and SAS – all of whom have been accused of infringing what they allege are indefinite patents. The second amicus brief was filed by a joint effort of the Electronic Frontier Foundation (EFF) and Public Knowledge.
Briefs:
Look at it from the Court’s point of view: why take it again so soon? They just made a correction to indefiniteness law that will take some time to achieve a new relatively stable interpretation. Why would the Court not give the Federal Circuit as an institution time to work with it rather than taking it back so soon? It is not a court of error correction, but of fixing systematic problems.
Erik, see link to patentlyo.com for more, but the main argument explores the interface between Halliburton and 112(f) and with 112(a), something the Federal Circuit has failed to address in any serious fashion, except perhaps in Donaldson. The Federal Circuit has chosen to ignore Federico’s explanation of the purpose for 112(f) and that it was not intended to authorize single means claims.
But that was then (the era of Rich, who actually wrote 112(f)) and this is now. But the Supreme Court’s not to take the issue as a case of first impression without thorough vetting by the courts below first.
And sometimes certain others do not pay attention to Federico and the fact he observed that Congress opened up the use of claims sounding in function OUTSIDE OF 112(f).
As I have so often reminded these sAmeones….
Erik Look at it from the Court’s point of view: why take it again so soon?
I think a better driver here is that there are likely better vehicles to address the issue of functional claiming than the claims at issue here.
I see no reason to think that the Supreme Court wants to take on details of claim drafting. In deciding the patentable method cases, it appears to have taken the implicit position that the craft of claim drafting should be irrelevant to the result. To the extent that the craft should affect the outcome, I do not see the Supreme Court taking a claim drafting case away from the Federal Circuit absent a Federal Circuit-Patent Office conflict where the USPTO appeals a Federal Circuit defeat to the Supreme Court.
Erik, I also think it really needs to have the Federal Circuit fully consider 112(f), its relation to 112(b), etc. I personally think the Federal Circuit goes out of its way to avoid Halliburton and its point of novelty analysis. In this, it is wrong. There are clearly different considerations at work when claiming old and well known structure and novel structure or compositions.
I also think that claim should clearly and unmistakably invoke 112(f) on their face so that we do not have to wait unit a court decision to determine whether the claim invokes the protection of the statute. The court’s trend to find everything covered by 112(f) is going in the wrong direction.
Halliburton and your beloved “point of Novelty” Ned are canards that did not make it through the Act of 1952.
Check your own Fav source of Federico, man.
Please.
[…] was quick: The Supreme Court has denied certiorari in Nautilus v. Biosig (round II). I discuss that case […]
Denied: link to supremecourt.gov
The petition relies heavily on Halliburton, but misses a nuance. The Supreme Court concerned about the apparent breadth of the claim regardless that it was construed to cover the corresponding structure and equivalents. But, Congress reacted to Halliburton by enacting 112(f). What does this mean?
Future cases have to readdress the interface between 112(f) and 112(b). Consider the words of Federico that Congress did not intend to allow what amounts to single-means claims. Also consider Faulkner v. Gibbs, where novelty was found in the combination and the requirement of the statute that the it applies only to combination claims. The words of Federico and the statute itself would seem to suggest that Congress did not intend to permit the statute to permit effectively single means claims where there was no new cooperation with other elements in the claim and novelty was in the one element. This would preserve the holdings of Halliburton and Faulkner, and permit the use of functionally defined elements only with old elements or with new combinations.
Ned,
Reminding you (yet again) that Fulkner was NOT post-1952 law, and reminding you (yet again) that it is you that misses the nuance of what Congress (NOT Rich) did in 1952, the very moment you have a combination claim, you sidestep the limitation of a single means claim.
It is the COMBINATION aspect of “claim as a whole” that you must look at, acknowledge, and integrate into your posts.
EVEN IF that combination claim has NO single individual element that can be called your “Point of Novelty,” there is NO running afoul of the law.
You keep on insisting on having this phantom “Point of Novelty” in an aspect of law that just is not there.
Not there per Congress.
Not there per the congressional record.
Not there per Federico.
Not there per Rich.
Obviously, anon, Federico did not view the subject matter of 112(f) so sanguinely.
From his commentary:
“The language does not go so far as to permit a so-called single means claim, that is a claim which recites merely one means plus a statement of function and nothing else. Attempts to evade this by adding purely nominal elements to such a claim will undoubtedly be condemned. The paragraph ends by stating that such a claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. This relates primarily to the construction of such claims for the purpose of determining when the claim is infringed (note the use of the word “cover”), and would not appear to have much, if any, applicability in determining the patentability of such claims over the prior art, that is, the Patent Office is not authorized to allow a claim which “reads on” the prior art.”
You will note, Mr. anon, that Donaldson did not site Federico because the holding of Donaldson was that § 112(f) applied to claim construction in the patent office when the language of the statute itself clearly implied that it did not and Federico actually said it did not.
Single means…
That’s a really really really important point Ned. One you seem to just not want to grasp.
You will note, Ned, that as I have explained to you many many many times now, whether or not Federico was “sanguine,” does NOT change the fact that Congress (yes, Congress, and not your scape goat of Rich) changed the law to allow – as I posted above: And sometimes certain others do not pay attention to Federico and the fact he observed that Congress opened up the use of claims sounding in function OUTSIDE OF 112(f).
If you can place your dust-kicking Donaldson views to the side for a moment and grasp first the actual point that I put on the table, you will be far better off.
I will offer the view that Federico was indeed concerned with “sham” types of claims that were “really” single means claims “dressed up” in multiple elements.
But that concern is taken care of already with the “no mere aggregation” doctrine.
If you are “really” only having a single means and try to obscure that with additions of elements that have no integration with that single means, then you might – just might run afoul of the Single Means aspect of what Congress did in 1952.
One of the very real and severe problems though that you (and Malcolm both share) is that your Windmill chase blinds you to the fact that the typical software and business method patents that you so despise are in fact integrated in their MULTIPLE different elements, some of which elements – or even merely parts of claim elements – have that “sounding in function” aspect that you just do not like.
THIS is exactly the effect that even Prof. Crouch has noted in his own coined term of Vast Middle Ground.
THIS is exactly the (nigh constant) reminder that I have to give to Malcolm when Malcolm attempts to move the goalposts from claims having some portion of “sounding in terms of function” to his strawman of claims TOTALLY in the mind, or claims ENTIRELY functional.
This is an absolutely critical element of what Congress did in 1952 that until you are willing to be inte11ectually honest about, the dialogue with you will be nothing but my reminding you of where you have gone astray.
Anon, is a Jepson claim having a single element after the colon a single means claim? The patent office has always thought so.
I am more than sure that you do NOT want to try to use the optional claim format of the Jepson claim format to try to argue your point, Ned.
“Space relationship” is commonplace patent attorney jargon.
If “spaced relationship” is indefinite, there must be hundreds of thousands of patents using that phrase that are also in jeopardy.
silicone,
A search on the PTO website using: aclm/”spaced relationship” in the Advanced Search box yields 25,522 hits since 1976. Some of these have expired, of course.
“spaced relationship” is a very narrow search string. Equivalent claim language could include : spaced relation, spaced from and even simply “spaced.” Try those and perhaps a few others I haven’t thought of and I bet you get to the predicted hundreds of thousands fairly quickly.
Les,
Right you are. “aclm/spaced” yielded 675,116 hits. Looking at the first 12, “spaced apart from each other” is popular along with “spaced from” and there was one “spaced equally.”
Although “spaced apart from each other” indicates a spatial relationship, it it not quite synonymous with “in a spaced relationship,” which indicates something more special. Even so, silicone’s general intimation is not unreasonable.
Maybe a competent patent attorney drafted the application and defined the term.
Can you imagine?
I know. Boggles the mind.
You know, one could use the term “spaced relationship” and also define that term too (either explicitly or implicitly).
Competence does NOT mean a picture claim, Malcolm.
Your option of a totally objective physical structure claim remains just that:
an option
Why even bring it up? What two objects are not in a spaced relationship? Can two electrodes have an un-spaced relationship? Strike the term “spaced relationship” from the claims at issue in this case, and the meaning of the Biosig claim does not change at all.
My understanding is that the examiner indicated that the spaced relationship limitation was critical to the novelty of the device.
Sounds like a drunk examiner.
Dennis, it was not just the spaced relationship, but its function to balance and therefor remove the unwanted EMG signals at a difference amplifier.
Still the specification disclosed — and claimed – hardware and circuits that were old. The only thing new was the “information” that EMG signals could be removed by a difference amplifier. There was no discussion in the specification of the need to adjust anything about spacing or otherwise to do that. The limitations added in reexamination or added by “construction” regarding adjusting spacing amounted to new matter.
Last time we were here, Ned, David Stein ripped you to pieces on this point.
Maybe you should go back and refresh your memory instead of monologuing….
anon, you view of the conversation between David and myself is a bit, let us say, delusional.
Sorry Ned, but it is you that is delusional.
Do you really think that David is in agreement with you? The fact that he differs from you is a first fact that you must grasp. Only then can you possibly understand why he differs from you.
From the petition, anon:
“[The Federal Circuit] again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity.”
David has been arguing that the patent disclosed something new in terms of apparatus or circuits. It did not. It only disclosed that EMG signals could be removed by the same apparatus disclosed in the prior art. But it did not say how.
Not sure why you are bringing up the petition in our conversation as to how David schooled you, Ned.
Are your ASSuming that the petition somehow MUST be correct?
That’s a simple and simply bad mistake.
” It only disclosed that EMG signals could be removed by the same apparatus disclosed in the prior art. But it did not say how.”
Subtraction Ned.
So the Examiner found two electrodes in an un-spaced relationship? Would would that look like?
Mr. Non Obvious, I think you jest. In the reexamination, there was no difference over the prior art structurally or in its circuits.
That is why the applicant shifted to the functional difference of balancing EMG signals — a function allegedly not performed by identical prior art structure and circuits.
Yeah, sure.
I think I do.
But some day, I hope to encounter two electrodes in an un-spaced relationship, just so I can appreciate why anyone would see a need to differentiate.
Silly, I think you missed the whole point of the petition.
Of course it is right for a court to baulk at finding “spaced” indefinite. Who amongst us would volunteer to write such an opinion? Two things are either spaced or they’re not. There must be a better way to deal with the validity of this claim.
When Europe wrote its EPC in 1973, it purposefully excluded indefiniteness (Art 84, EPC) as a ground of invalidity of an issued patent. That was confirmed in the EPC 2000 re-write of the Convention. In reality, when an indefinitenes attack is excluded, indefiniteness can invariably be disposed of under one or both of novelty and sufficiency.
Whereas novelty and non-obviousness are Y/N issues, definiteness is not. No claim that ever issued is 100% definite. Claims written in words can only approach 100% definiteness asymptotically.
So the question is: Definite enough Y/N? Fit for purpose Y/N?
Enough for what? That question usually emerges only after you have seen the embodiment accused of infringing. Now then when the same court is addressing, in one Action and counter-Claim, both infringement and validity, the squeeze imposed on a patent owner by an indefinite claim is thrown into stark relief.
But when that is not the case, then it’s off to SCOTUS. At least once.
Function to confer novelty? I predict that SCOTUS will take the same line as with business methods, that is to say, never saying “never”. After all, does it really want to deny patentability to subject matter the EPO (in bio-tech, for example) is routinely allowing through to issue? Surely not. Indeed, I think the Justices will not appreciate being asked, and for that reason will decline to take the case.
Good call MaxDrei on the refusal.
Not sure your reasoning reaches, but good call on the result nonetheless.
Not “sure”, anon? You are always so “sure” about everything.
In my jurisdiction, to qualify as a patent attorney, you have to pass exam papers where no points at all are given for the “right” answer. The only means of gathering points is the reasoning which the candidate provides in his or her written answer. That might be why in my postings here, I present my reasoning.
That the Supreme Court would decline was plain as a pikestaff. So no points for getting that “right” eh? Giving my reasoning was, for me, another opportunity to get up on one of my hobby-horses. Nice though, that you are not “sure” that my reasoning is errant.
Your reasoning, MaxDrei, is typically atrocious and simply de@d wrong on soooo many levels.
Here, the phrase “Don’t look a gift (hobby) horse in the mouth would have been apt, as I was being polite to you.
As to “plain as a pikestaff,” I am unfamiliar with that phrase, but would you consider it malpractice to waste a client’s money if there was in fact ZERO chance on the filing of a legal motion?
(plus – quite the opposite of your intimation, I was giving you more than “So no points for getting that ‘right’ eh?“… showing (yet again) just how daft you can be when you simply react to the person making the post and don’t bother critically reading the post itself.
But hey, thanks for trying to draw some attention to yourself here. You succeeded, but probably not the type of attention you were hoping for. Another phrase comes to mind, one about 1d10t’s proving yourself by your opening your mouth….
2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?
Yes. Wabash said this 75 years ago. From Wabash:
A limited use of terms of effect or result, which accurately define the essential qualities of a product to one skilled in the art, may in some instances be permissible and even desirable, but a characteristic essential to novelty may not be distinguished from the old art solely by its tendency to remedy the problems in the art met by the patent.
The very next paragraph in Wabash is important for understanding how Nautilus was originally decided in the manner that it was – by stating a reasonable certainty standard. It also explains that functionally-claimed novelty is virtually per se unreasonable.
The Circuit Court of Appeals below suggested that “in view of the difficulty, if not impossibility, of describing adequately a number of microscopic and heterogeneous shapes of crystals, it may be that Pacz made the best disclosure possible, . . .” But Congress requires, for the protection of the public, that the inventor set out a definite limitation of his patent; that condition must be satisfied before the monopoly is granted. The difficulty of making adequate description may have some bearing on the sufficiency of the description attempted, but it cannot justify a claim describing nothing new except perhaps in functional terms. It may be doubted whether one who discovers or invents a product he knows to be new will ever find it impossible to describe some aspect of its novelty.
Whether the court takes it, I dunno (though they should, given the contempt the federal circuit showed by not even attempting to actually apply the given test). But the issue has already been decided.
Random, we both agree that one cannot claim an invention in terms of a result, and that such a claim suffers under both 112(a) and (b). 112(f) solves the 112(a) problem by limiting the scope of the claim to the corresponding structure and equivalents. It potentially solves the 112(b) problem if the claim itself clearly invokes 112(f) and the inventive, corresponding structure is clearly linked so that there is no ambiguity as to what it is.
But, in my view, a claim is indefinite nevertheless when the claim term at the point of novelty itself does not clearly, and unmistakably, invokes 112(f) on its face or if, the inventive, corresponding is not clearly linked or worse not even described.
Thus I think the trend of the Federal Circuit to construe claims that do not use the term “means for”or an equivalent thereof, such as “means to” or “means that,” are going in the wrong direction. Unless the claim term (at the point of novelty) itself clearly and unmistakably invokes 112(f), the claim should be construed as indefinite.
I also do not agree that the same rules should apply to claiming old structure where broad ranges of equivalent normally apply to include devices known to be substitutes. Halliburton at 13 describing the DOE.
Your attempted use of “Point of Novelty” has no nexus with the law as written by Congress in the Act of 1952.
Time to grow up Ned.
I see you are pointedly ignoring Federico once again. Most folk do not think Halliburton is overruled. Moreover, the statute is specific.
1. It is optional.
2. It applies to combination claims.
3. It applies to “means for” “without” “recital of structure in support thereof.”
Federico stated that it did not apply to single means claims. Claims to novel combinations are authorized. It is not clear, not at all clear, whether claims to old combination with a single novel MPF element is authorized.
This question has not been addressed, especially in view of Faulkner v. Gibbs that found no objection because the claim there was to a new combination.
Ned,
Please stop that Malcolm-like Accuse 0thers 0f That Which You Do.
You are the one ig noring Federico. Not I.
I am the one reflecting his notice that (as I stated at 5.1): And sometimes certain others do not pay attention to Federico and the fact he observed that Congress opened up the use of claims sounding in function OUTSIDE OF 112(f).
You are the one somehow attempting to eliminate and ig nore what Prof. Crouch has coined as the Vast Middle Ground of NON-single means claims and those NON-single means claims having parts thereof sounding in function. This is quite apart from the separate optional path of claiming using 112(f). Somehow you have it in your mind that ONLY in 112(f) can using terms sounding in function be allowed, and that is just not so.
I do not understand why you are being so persistent in something so easily seen as being inc0rrect.
Anon, one of the questions the patent bar had after Halliburton was whether one could claim old elements functionally. The case is not clear at this point even though the Supreme Court did clarify Halliburton in Faulkner v. Gibbs. But this to make it clear that means plus function claims were authorized in combination claims, even in claims consisting of entirely old elements – where the novelty was in the combination – is one reason the bar proposed what became §112(f). Of course are also lots of patents out there at the time where the novel element was claimed using means plus function.
Regardless of validity, prior to Halliburton, functionally claimed elements were construed to cover corresponding structure described in the specification and equivalents pursuant to Westinghouse. 112(f) did not change the law in this respect.
You keep on bringing up Faulkner and insist on ig noring the fact that Faulkner EXPLICITLY was not dealing with the Act of 1952.
Please stop this disingenuous behavior.
You also keep on ig noring the fact – AS MENTIONED BY FEDERICO – that the Act of 1952, as written and PASSED by Congress (i.e. not just your scape goat Rich) provided for a Vast Middle Ground of combination claims – OUTSIDE OF 112(f) with entirely legally permissible use of terms sounding in function.
AGAIN – please stop your misrepresentations of what the law IS.
I “get” that you want the law as passed by Congress in the Act of 1952 to be something different. You want the section of 112(f) to be read as some type of mandatory section if ANY terms sound in functional language.
That.
Is.
Just.
Not.
So.
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