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).
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.
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Original Opinion Majority Written by Judge Newman and Joined by Judge Lourie; Dissent by Judge Dyk.
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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).