Wednesday, 4 June 2014

Supreme Court Rejects Federal Circuit Standard For Indefiniteness, But Precise Rule Remains Elusive

In a pair of unanimous decisions issued June 2, 2014, the U.S. Supreme Court rejected Federal Circuit rulings addressing patent validity and infringement. However, in keeping with its recent practice, the Court refrained from articulating its own concrete tests, leaving to the lower courts the task of applying relatively vague concepts. The Court's treatment of the standard for claim definiteness is illustrative of this approach.

In Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, the Supreme Court considered the standard for claim indefiniteness under 35 U.S.C. § 112(b). The Federal Circuit had applied an extremely high standard for defendants challenging claims as invalid as indefinite, holding in earlier cases that an offending claim term was not invalid if it remained “amenable to construction” and was not “insolubly ambiguous.” See Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). The Supreme Court rejected that test as too lax:
Those formulations can breed lower court confusion, for they lack the precision §112, ¶2 demands. 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. 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.
Slip op. at 12 (citation omitted). Instead, the Court applied a test based on the ability of a person of ordinary skill in the art to grasp the scope of the claims:
To determine the proper office of the definiteness command, therefore, we must reconcile concerns that tug in opposite directions. Cognizant of the competing concerns, we 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. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270 (1916).
Slip op. at 11 (emphasis added). Instead of applying the new test to the disputed claims in Nautilus, the Court remanded to the Federal Circuit. A copy of the Court's opinion is HERE.

The lower courts, no doubt, will need to fashion a workable rule applying the new “reasonable certainty” concept.  How much information is needed to be enough to "inform ... about the scope of the invention"? What is "reasonable certainty"?  Can a person skilled in the art take advantage of the teachings of the art in interpreting claims? The Court's decision creates a flexible standard, as is required to balance the competing policy goals impinging on the definiteness question. But the standard needs significant refinement before it is of any practical use.

Coincidentally, the USPTO announced the launch of its Glossary Pilot Program on the same day Nautilus was decided.  The pilot is designed to enhance claim clarity in the specification of software-related patent applications by encouraging the use of glossaries in applications. The program allows applicants to petition for admission to the pilot program, which will last for 6 months or until 200 applications have been accepted. Applications in the program "must include a glossary that is placed at the beginning of the detailed description portion of the original specification of the application, identified with a heading, and presented on filing of the application. The glossary should include definitions that will assist in clarifying the claimed invention, creating a clear application file wrapper history, and must comply with all of the requirements" of the pilot program. Application accepted into the program will receive "special" status. Full details of the pilot program are posted HERE

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