by Dennis Crouch
The indefiniteness-focused en banc petition in Nature Simulation Sys. Inc. v. Autodesk, Inc., 23 F.4th 1334 (Fed. Cir. 2022) has now been pending for six-months. Most en banc petitions are denied rather quickly. The extended delay here suggests to me that the court will still deny this petition, but the denial will be accompanied by explanatory opinions that further extend the doctrine. Of course, there are several other potential outcomes.
The petition asks two question that I have reframed here:
- Examiner Deference: Should any deference be given to patent examiner actions or statements when determining indefiniteness? (Here, the examiner proposed certain claim language in order to avoid an indefiniteness problem, and the majority gave weight to that conclusion).
- Doctrinal Overlap: Does the fact that the specification “describes and enables practice of the claimed method, including the best mode” have any relevance on whether the claim is definite? (Here, the majority opinion implicitly suggests a relationship).
Split infinitives: Federal Circuit divides on Indefiniteness
The NSS inventions relates to computer graphics rendering and claims a method of performing Boolean operations on facets of geometric objects. NSS improved upon the known “Watson method” with what it called the “modified Watson method.” During prosecution, the examiner rejected that claim terminology as indefinite and then proposed addition of a wherein clause that spelled out further details that point to particular steps taken in modified Watson:
wherein the modified Watson method includes removing duplicate intersection points, identifying positions of end intersection points, and splitting portion of each triangle including an upper portion, a lower portion, and a middle portion;
Exr. Amendment found in Notice of Allowance for Appl. No. 15/840,052. Later, NSS sued Autodesk for patent infringement. Nature Simulation Sys. Inc. v. Autodesk, Inc., Docket No. 3:19-cv-03192-SK (N.D. Cal.) and Autodesk argued that the claims were still indefinite.
Following a Markman hearing, Magistrate Judge Kim concluded that the claims were indefinite and dismissed the case. (Both parties had consented to have the case handled fully by the Magistrate Judge who is a former IP litigator). In her opinion, Judge Kim spelled-out the dilemma as she saw it.
Thus, the question is thus: if the PTO issues a patent after amendment to clarify an indefinite term, but an expert later opines that a POSITA would not understand the term, how does the Court determine whether the term is indefinite? The only way to do so here is to look at each argument to see if Autodesk raises any unanswered questions. Here, Autodesk does.
Nat. Simulation Sys. Inc. v. Autodesk, Inc., 19-CV-03192-SK, 2020 WL 12933852, at *4 (N.D. Cal. July 31, 2020) (finding the “modified Watson method” indefinite).
On appeal, the Federal Circuit reversed, but in a split decision. In particular, Judge Newman was joined by Judge Lourie in siding with the patentee while Judge Dyk wrote in dissent. The majority opinion particularly critiques Judge Kim’s “unanswered questions” approach as not following the law:
When the meaning or scope of a patent claim is disputed by litigants, the judicial role is to construe the claim as a matter of law, on review of appropriate sources of relevant information. As summarized in Phillips v. AWH Corp., the court looks first to the intrinsic record of the patent document, including “the words of the claims themselves, the remainder of the specification, the prosecution history, and extrinsic evidence concerning relevant scientific principles, the meaning of technical terms, and the state of the art.” 415 F.3d 1303, 1314 (Fed. Cir. 2005) (en banc).
Here, however, the district court did not construe the claims, did not apply the protocols of intrinsic and extrinsic evidence, and did not resolve the meaning and scope of the challenged claims. The district court applied an incorrect standard of “unanswered questions” and a flawed analysis of validity.
Nature Simulation Sys. Inc. v. Autodesk, Inc., 23 F.4th 1334 (Fed. Cir. 2022) (majority).
The majority approach here aligns easily with pre-Nautilus indefiniteness holdings that claims are indefinite only if not able to be construed. Pre-Nautilus, a proper approach to all claim construction was to first endeavor to construe the claims. But the new “reasonably certain” standard does not necessarily require the court to make any attempt to construe. Thus, while I agree that the district court’s “unanswered questions” rule departs from the law, Nautilus does not require a prior attempt-to-construe. On the whole though, I have seen that a judge’s thought process when attempting to construe challenged terms provides keen insight into the question of indefiniteness. And, it certainly remains true that unconstruable terms render the claims indefinite. Thus, I would be in favor of an en banc Federal Circuit opinion suggesting that the indefiniteness process ordinarily include an attempt to construe.
The Newman majority also noted that the examiner should be given some amount of deference. Here, the majority explained that “[a]ctions by PTO examiners are entitled to appropriate deference as official agency actions, for the examiners are deemed to be experienced in the relevant technology as well as the statutory requirements for patentability.” Id. The court also quoted its on-point albeit non-precedential statement in Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x 1011 (Fed. Cir. 2018) to the same effect: “We presume that an examiner would not introduce an indefinite term into a claim when he/she chooses to amend the claim for the very purpose of putting the application in a condition for allowance.” The dissent
Judge Dyk explained in dissent that indefiniteness should be seen as an objective legal inquiry not burdened by a subject inquiry into the mind of the patent examiner. The test is whether the PHOSITA can discern the patent claim scope with “reasonable certainty.” The inquiry does not ask “whether the claim language was added by a patent examiner or was not indefinite to the examiner.” Judge Dyk in dissent.
= = =
Original Opinion Majority Written by Judge Newman and Joined by Judge Lourie; Dissent by Judge Dyk.
Autodesk is represented by Brian Matsui (Morrison Foerster) along with his team of Rudy Kim, Roman Swoopes, and Seth Lloyd. NSS is represented on appeal by Matt Wawrzyn (WAWRZYN LLC).
= = =
The Federal Circuit has decided a number of indefiniteness cases in 2022. Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., 30 F.4th 1339 (Fed. Cir. 2022) (reversing district court finding that claims to “resilient” and “pliable” catheters were indefinite); U. of Massachusetts v. L’Oreal S.A., 36 F.4th 1374 (Fed. Cir. 2022) (vacating district court finding that claims to adenosine skin compositions were indefinite); ImmunoGen, Inc. v. Hirshfeld, 2021-1939, 2022 WL 885774, at *2 (Fed. Cir. Mar. 25, 2022) (vacating district court holding that “AIBW” is indefinite); ClearOne, Inc. v. Shure Acq. Holdings, Inc., 35 F.4th 1345 (Fed. Cir. 2022) (affirming PTAB determination that newly added “self-similar” claim language was not indefinite); Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1364 (Fed. Cir. 2022)(claimed “code” was not in MPF form and therefore not indefinite for lack of structural equivalents in the specification).
It’s difficult to explain to a client how a court at some further point in time may say that even though the Examiner is allowing the case based on the Examiner’s own amendment, the Examiner’s own amended claim is indefinite.
FWIW, I have never had much difficulty explaining this to a client. I have convinced clients to turn down examiner amendments when the language proposed looked to me like something that would not survive court challenge. It is not actually that hard to explain to most clients that the examiner does not know what s/he is talking about, and that the examiner is just trying to get a count—not to secure for the applicant a solidly enforceable patent.
Greg (as dozens) – pretending that he is NOT ‘the client’….
(psst – you have made it abundantly clear that you are inhouse there, Greg)
This guy really is a piece of work.
Judges Kim actually wrote: ‘Thus, the question is thus:’? She needs to go back to school and take an English course.
is not really the same thing as
Tinnus Enters., LLC v. Telebrands Corp., 733 F. App’x. 1011 (Fed. Cir. 2018).
Of course a court must presume that an examiner’s amendment did not introduce an unclear term into a claim, because an unclear term makes the claim invalid, and the court is statutorily obliged to presume the claim to be valid. That is not the same thing as according “deference” to the examiner.
As it happens, an examiner’s thoughts on clarity of language deserve Skidmore “deference”—which is to say, no deference at all. “The weight of [the Administrator’s] judgment in a particular case will depend upon the thoroughness evident in its consideration, the validity of its reasoning, its consistency with earlier and later pronouncements, and all those factors which give it power to persuade…” Skidmore v. Swift & Co., 323 U.S. 134, 140 (1944).
In so far as the examiner’s reasoning for the amendment language is persuasive, it should persuade, and insofar as it is not persuasive, it should not persuade. Who could think otherwise? There should be no “thumb on the scale” in favor of validity, however, merely because the examiner wrote the claim language rather than the applicant. The language is either clear or not, and its clarity to the relevant public does not actually change according to who drafted the claim text.
>which is to say, no deference at all
I haven’t fully researched the legal requirements for “deference,” but the Examiner’s conclusion *should* be highly persuasive:
1) the Examiner in the only expert in the process who isn’t being directly paid by one of the litigants. That alone should make their opinion highly credible.
2) The Examiner/Expert reviews the claims at a higher standard of review (i.e., a lower threshold for ambiguity) than do the Courts. MPEP 2173.02.
And, of course: 3) the statutory presumption of validity.
agree
While I tend to agree with your overall legal reasoning Greg I have to say I disagree with your ultimate conclusion. The reason why is because, in practice, the system you propose ends up having the courts have the final say in close cases of ambiguity/lack of clarity (or even in cases even near a close case). This is a profoundly bad governmental system to implement when the government has already okayed the language of the binding document. Especially when, as Old spells out below, the office already reviews at a higher standard (at least hypothetically). It just creates waste in the court system where the courts get called upon to humor “disagreements between the parties” as to language the government itself already okayed, and implemented itself.
Although I take no firm position on the matter, I must join Newman as a matter of good governance.
“That is not the same thing as according “deference” to the examiner.”
Potatoe, potato. The court/judicial branch is effectively deferring to the Executive branch on the 112 determination. That is they are “yielding to the judgment, opinion, will, etc., of another” (here the Executive).
I should add, in your system you effectively end up with a system where the government (the judicial) can end up disagreeing with its other branch (executive) and the person that gets screwed is the patentee after he took the government’s official word that the matter was ok. Not a good look for the government as a whole as good governance. That goes double when it is some esoteric instance that needs a firm deciderer to settle the likely abstract matter in terms sufficient for humans to do business. Presumably this doesn’t arise in everyday ho hum situations too often.
Not a good look for the government as a whole as good governance.
This is the worst possible argument that I can imagine for holding for the patentee in a clarity challenge. If the claim language is clear, fine, the court should hold for the patentee. If the claim language is not clear, then the court should hold for the challenger. For the court to shade this distinction in favor of the patentee merely to avoid the embarrassment of admitting a government employee’s error, however, is to compound the error, not solve it.
[Y]ou effectively end up with a system where the government (the judicial) can end up disagreeing with its other branch (executive) and the person that gets screwed is the patentee after he took the government’s official word that the matter was ok.
The PTO does not exist to vindicate the applicant’s interests. The PTO exists to vindicate the public‘s interests. The applicant’s lawyer is there to vindicate the applicant’s interests. If the PTO does a poor job of vindicating the public’s interests, it only makes the error worse if the PTO then turns around and argues that we need to excuse the error because it was not the applicant’s fault.
What exactly was the applicant and the applicant’s attorney doing when the language was proposed? I have many times refused examiner’s amendments because the proposed language would not hold up in court. That is what the applicant’s attorney is paid to do—to avoid invalidity issues. If the applicant or the applicant’s attorney was not up to that job, that is no reason why the public should bear the cost of that failure.
“merely to avoid the embarrassment of admitting a government employee’s error, however, is to compound the error, not solve it.”
You will notice that I do not base my position on mere embarrassment, or on admission of error by any part of the gov. I (and the courts I believe) base it on your proposed system being a profoundly bad governmental system that creates large amounts of government waste.
To be clear, I would say if the claim is clearly invalid under 112 then yes, go ahead and hold the claim invalid. But I’m talking about the close calls that are necessarily what is usually at issue in instances like this. You can’t just have the courts saying “nuh uh” all the time to the other branch’s determination, esp with the law requiring a presumption of validity (legal validity that is). Bad system bro. The courts should simply decline to be a part of it, as they wisely are.
“The PTO does not exist to vindicate the applicant’s interests. ”
No, perhaps not, but the entitlement program that the congress implemented statutorily does.
“If the PTO does a poor job of vindicating the public’s interests, it only makes the error worse if the PTO then turns around and argues that we need to excuse the error because it was not the applicant’s fault.”
We’re talking about mere arguable instances here. The applicant should be able to have some reliance on the gov bro. And then not have the other branch of the gov determine contrary, all in the name of administrating the patent system. Sorry not sorry. And to be clear, we’re not talking about language generated by the applicant’s lawyer, we’re talking about language generated by the examiner as far as I can tell. That is, the government already came up with the language to resolve any patentability issues (including 112), and then the government is countermanding itself later in court, under your system. If the PTO did a “poor job”, then petition the president/undersec for redress of this great injustice.
” I have many times refused examiner’s amendments because the proposed language would not hold up in court. ”
Good stuff. Never had that happen to me that I know of in my proposals, as most of my proposals are pretty simplistic, or are very sophisticated mimickings of language I’ve seen drafted by attorneys.
“If the applicant or the applicant’s attorney was not up to that job, that is no reason why the public should bear the cost of that failure.”
We’re talking about mere arguable instances of some ambiguity etc. a 112b here. There is no supar great “cost of some huge muh failure”, it’s all just a determination of what is good enough language to suffice for a patent document. In real life it is a matter of official deciderering. And you’re just substituting another deciderer in for the original deciderer in a close case, thusly have got a (another) bite at the apple.
“but the denial will be accompanied by explanatory opinions that further extend the doctrine.”
Advisory opinion much?
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