Patent Claims More Vulnerable to Invalidity Attacks After Supreme Court

On the Same Day, to Study Ways of Improving Patent Claim Clarity, the USPTO Launches Glossary Pilot Program Offering Expedited Processing for Software Patent Applications

While claims are recognized as being the most important part of the modern patent document, the scope of the rights secured by a patent was decided by U.S. courts in eighteenth and early nineteenth century infringement actions by way of a comparison of the accused product or process with the entire specification of the patent, rather than only the claims.¹ As one commenter has observed, “the courts for a long time did not regard [the claims] as the definitive measure of the scope of the patent” but rather looked to “the whole patent document, including the claims as a guide...to ascertain the scope and nature of the invention.”²

Beginning in the latter half of the nineteenth century, however, courts increasingly relied on claims to determine the legal boundaries of a patented invention.³ The impetus for this shift was the statutory requirement, added by the Patent Act of 1836, that every patent applicant must “particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery.”⁴ Claims are now considered to be the essence of the patent right – they are “the portion of the patent document that defines the patentee’s rights.”⁵

The statutory claiming requirement was modified by the Patent Act of 1870 to specifically add the phrase “distinctly claim” to the statute, and this formal requirement for defining the invention is preserved in 35 USC §112 of current law.⁶ Although the disclosure in the patent specification is regularly relied upon to aid in interpreting claim language, the “definiteness” requirement of §112 is essentially a question of whether the language of the claims defines the invention in a manner that is clear and unambiguous to a hypothetical person possessing an ordinary level of skill in the pertinent art. In Merrill, the principal policy objective for the increased importance afforded to the claims was articulated as being the necessity for highly precise public notice of the patentee’s rights, as claims are intended to clearly demarcate what the invention is and what is left free to the public to use. In this sense, claims are often compared to the “metes and bounds” of a real property deed – indefinite claims, by analogy, fail to inform passersby whether they are trespassing or not.

Acknowledging the patent system’s public notice function, a unanimous Supreme Court, in Nautilus Inc. v. Biosig Instruments, Inc., lowered the threshold for invalidating patent claims for indefiniteness by adopting a new legal standard for determining whether a claim is indefinite and casting away a standard that had been consistently employed by the Federal Circuit.

Under the Federal Circuit’s more lax standard for patentees, a patent claim was considered to be indefinite only when it was “not amenable to construction” or “insolubly ambiguous.”⁷ That is, the definiteness of a claim’s terms depended on whether those terms could be given a reasonable meaning by persons of ordinary skill in the art, such that claim terms were found to be insolubly ambiguous only if they provided inadequate guidance to allow such persons to understand and resolve their scope,⁸ even where a difficult issue of claim construction is presented over which reasonable persons may disagree.⁹

In applying the “insolubly ambiguous” standard to claims directed to a grip-activated heart rate monitor for use with exercise equipment in U.S. Patent No. 5,337,753 (“the ‘753 patent”), based on which the assignee Biosig had brought a patent infringement action against competitor Nautilus and, in turn, Nautilus had sought to have held invalid for indefiniteness, the Federal Circuit reversed a district court decision that the asserted claims 1 and 11 of the ‘753 patent were indefinite. The district court had determined that functional recitations in the claims describing a “spaced relationship” between common and live electrodes mounted on an elongate member (such as a handlebar), where this relative positioning of the electrodes to one another referenced by the phrase “spaced relationship” was not quantified in the specification or the claims of the patent in terms of any range of distances, were impermissibly vague and thereby rendered the patent invalid as a matter of law.

The Federal Circuit reasoned, however, that certain variables as indicated by the claim language, specification, figures, and prosecution history of the ‘753 patent (the “intrinsic evidence”) provided sufficient clarity to those of ordinary skill in the art regarding the claimed spaced relationship so as not to be insolubly ambiguous, even if some experimentation was needed to ascertain its particular boundaries, stating that “the ‘753 patent discloses certain inherent parameters of the claimed apparatus, which to a skilled artisan may be sufficient to understand the metes and bounds of ‘spaced relationship.’”

In vacating the appeals court decision that was in favor of Biosig, the Supreme Court held that the phrases “amenable to construction” and “insolubly ambiguous” employed in the Federal Circuit’s standard “lack the precision §112…demands,” and, therefore, the standard “does not satisfy the statute’s definiteness requirement.” Rejecting the “amenable to construction” or “insolubly ambiguous” standard, Justice Ruth Bader Ginsburg, writing for the unanimous Court, stated that these expressions, which tolerate some ambiguous claims but not others, “can leave courts and the patent bar at sea without a reliable compass.”

Although Justice Ginsburg noted that “the definiteness requirement must take into account the inherent limitations of language” and that some degree of uncertainty is required to ensure appropriate incentives for innovation, she further expressed that, in contrast to the Federal Circuit’s standard, “[ i ]t cannot be sufficient that a court can ascribe some meaning to a patent’s claims….To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty,’…against which this Court has warned.”

Instead, Justice Ginsburg set forth a new, stricter standard for claim clarity that “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.” Thus, as opposed to the Federal Circuit’s “insolubly ambiguous” standard, under which claim terms would not be found indefinite as long as the terms could be given any reasonable meaning by those of ordinary skill in the art, the law now requires that such terms allow those skilled in the art be able to ascertain their particular scope with reasonable certainty, thereby lowering the threshold for proving indefiniteness by shrinking the level of ambiguity that was previously allowed by courts in patent claims.

It remains to be seen whether this new “reasonable certainty” standard prescribed by the Court will be a significant enough change in the law to enable Nautilus to prevail on its arguments that the ‘753 patent should be held invalid for claim indefiniteness, as the Court, recognizing that “we are a court of review, not of first view,” remanded the case with instructions for the Federal Circuit to reconsider the issue of indefiniteness under the new standard. Possibly hinting at a slight degree of doubt regarding Nautilus’s ability to succeed, Justice Ginsburg, in referencing Nautilus’s assertions that the claimed recitation of “spaced relationship” is open to multiple interpretations reflecting markedly different understandings of the patent’s scope, as exemplified by disagreement among the members of the Federal Circuit panel in the how to properly consider the intrinsic evidence in conducting the indefiniteness analysis, noted that “all three panel members found Nautilus’ [indefiniteness] arguments unavailing.” Nevertheless, for other parties challenging the validity of a patent claim, while the implications the Nautilus decision will develop over time as courts interpret and apply this new standard, the lower threshold for proving indefiniteness adopted by the Court may provide a greater opportunity for claims of invalidity on indefiniteness grounds.

As for patent applicants looking to ensure the claims of their eventual patent will not be susceptible to invalidity attacks on grounds of indefiniteness, the Court’s decision in Nautilus provides a clear reminder of the importance for both the specification and the claims of a patent application to use terminology that is clear to those skilled in the art, and also casts a shadow on the practice of using “wiggle words” in claims for the advantages of flexibility through deliberate ambiguity. Thus, a final review of any specification prior to filing a patent application should be made for the purpose of confirming that all critical terms in the claims clearly define and set forth the scope of the invention. For situations where there is any doubt as to whether a term may be confusing or ambiguous, or if the applicant intends a term to have a particular meaning, it is best to explicitly provide the desired definition for the term in the specification.

Coincidentally, on June 2, 2014, the same day the Supreme Court handed down the Nautilus decision, the USPTO began the offering patent applicants in the software field the opportunity to participate in the Glossary Pilot Program, as part of a White House initiative to improve claim clarity in high-tech patents, “to study how the inclusion of a glossary section in the specification of a patent application at the time of filing the application improves the clarity of the patent claims and facilitates examination of patent applications.”¹⁰

To participate in the newly-launched pilot program, an applicant must provide, upon the filing date of an eligible patent application: (1) A petition to make special, and (2) a formal glossary section included as part of the patent application specification that defines terms used in the patent claims (as well as any other terms the applicant deems appropriate). Applications accepted into this pilot program will receive expedited processing and be placed on an examiner’s special docket prior to the first office action, and will be afforded special status up to issuance of a first office action.

Filing an application under the Glossary Pilot Program can thus provide applicants with the dual benefits of expedited processing and a decreased likelihood that the claims of their eventual patent will be vulnerable to invalidity challenges for indefiniteness under the new, stricter standard for claim clarity adopted by the Supreme Court in Nautilus. In addition, the USPTO does not require a fee for submitting a petition to have an application accepted into the pilot program. The window of opportunity for applicants to participate, however, is limited – the program will run only until December 31, 2014 or the USPTO accepts 200 grantable petitions, whichever occurs first.
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¹See Blanchard v. Putnam, 75 U.S. 420, 426 (1869) (describing the infringement inquiry as “[w]hether the machine of the defendents infringes the plaintiff’s machine as described in the specification and claims of their letters patent”).
²William Redin Woodward, Definiteness and Particularity in Patent Claims, 46 Mich. L. Rev. 755, 760 (1948).
³See, e.g., Merrill v. Yeomans, 94 U.S. 568 (1877) (holding that the “formal claim” has “primary importance” in determining the extent of patent rights).
⁴§6, 5 Stat. at 119.
⁵Markman v. Westview Instruments, Inc., 517 U.S. 370, 372 (1996).
⁶“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” Leahy-Smith America Invents Act, §4(c), 125 Stat. 284 (2011). Justice Brandeis explained the rationale behind this requirement in Permutit v. Grover, 284 U.S. 52, 60 (1931): “The statute requires the patentee…to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.”
⁷Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).
⁸Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
⁹Id. at 1373 (explaining that, “if the meaning of the claim is discernible, even though the task may be formidable and the conclusions may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds”).
¹⁰Glossary Pilot Program FR 79, 17137 (March 27, 2014).