Balancing Claim Language Requirements in Nautilus Case
Posted on Jul 2, 2014 in Articles
This article originally appeared in the July 2, 2014 edition of The Legal Intelligencer.
When legal principles are at odds with each other, it can be immensely difficult to reach a conclusion that is fair and just. Such is the dilemma in Nautilus v. Biosig Instruments, 572 U.S. _______ (2014). The case has been talked about for months, and seen by some as a possible major step forward in the “war” against “patent trolls.”
Many attorneys have argued that claim language that is vague, ambiguous and overly broad is to blame for much of the patent troll litigation. Nautilus was looked upon as an opportunity for the U.S. Supreme Court to articulate clear standards for acceptable claim language. The court, indeed, had a lot to say regarding the clarity that claims require. Ultimately, the justices provided a large number of criteria and observations that need to be balanced with each other to determine whether a patent claim is sufficiently clear to be valid.
The patent in the suit was for a heart rate monitor with pairs of electrodes that are gripped by a user’s hands. At issue was whether claiming electrodes that are “in spaced relationship to each other” satisfies the statutory requirement that patents end with claims “particularly pointing out and distinctly claiming the subject matter which the inventor … regards as the invention” (35 U.S.C. 112). Claim language not meeting this requirement is referred to as “indefinite,” and claims including indefinite language are unenforceable.
At the district court level, the judge had argued that he could not ascertain “what precisely the space [of the ‘spaced relationship’] should be.” The phrase was thus found to be indefinite and the claim was determined to be unenforceable.
The U.S. Court of Appeals for the Federal Circuit subsequently reversed. The reversal was based on a number of factors, including:
- “A patent shall be presumed valid” (citing 35 U.S.C. 282). “If the meaning of the claim is discernible, even though the task may be formidable … we have held the claim to be sufficiently clear to avoid invalidity on indefiniteness grounds,” citing Exxon Research and Engineering v. United States, 265 F. 3d 1371 (Fed. Cir. 2001). Thus, the Federal Circuit accorded respect to “the statutory presumption of patent validity.”
- The meaning of the phrase “spaced relationship” could be ascertained from other language in the claim (which required detection of electrocardiograph signals from the electrodes). The court explained that the electrodes needed to have certain distance between them for the electrocardiograph signals to be detected.
- A person of ordinary skill in the art could understand the claim language.
- The claims were not “insolubly ambiguous.”
The U.S. Supreme Court vacated and remanded for further consideration consistent with its opinion. In particular, the Federal Circuit’s reliance on whether the claims were “insolubly ambiguous” was found to be incorrect. That phrase, and the phrase “amenable to construction” were described as “permeat[ing] the Federal Circuit’s recent decisions,” tolerating “imprecision,” diminishing the “public-notice function” of claim-drafting requirements and leaving “courts and the patent bar at sea without a reliable compass.”
The opinion speaks of the need to “reconcile concerns that tug in opposite directions.” It is this tension that makes patent claim drafting so difficult. The court acknowledged all of those concerns and explained the issues that need to be addressed to determine if claims have been properly drafted. There are six issues that need to be addressed:
- Language is imprecise, and because the metes and bounds of protection afforded by a patent are expressed with words, there are necessarily situations where it is difficult to understand what is protected by the patent.
- Patent claim language needs to be interpreted with some flexibility, to ensure various types of infringement can be properly asserted. The doctrine of equivalents, for example, permits infringement to be asserted where (very roughly speaking) the structure of a product differs from a patent claim but its function is similar. Flexibility of interpretation enables certain types of infringement actions to proceed.
- Definiteness of patent claims language is evaluated from the perspective of someone skilled in the relevant art, and as of the time that the patent application was filed. Interestingly, although the Federal Circuit incorporated this requirement into its decision, the Supreme Court added that one of ordinary skill in the art needs to be able to understand claim language with “reasonable certainty” at the time the application was filed.
- Claims are read (and determined to have definiteness) based on the patent’s specification and statements made during the procurement process.
- Claims need to be precise enough to provide clear notice of what is claimed, thus “appris[ing] the public of what is still open to them,” as in Markman v. Westview Instruments, 517 U.S. 370 (1996).
- Patents are presumed to be valid. The opinion acknowledged this point, but only in the form of a footnote. While the Federal Circuit’s respect of this requirement was acknowledged, the Supreme Court stated that “the presumption of validity does not alter the degree of clarity that [the statute] demands from patent applicants.”
All of the above requirements are well documented in earlier case law and have been well known for years. Before Nautilus, the prohibition against claims that are “insolubly ambiguous” would have been part of the above list; now it is not.
Interestingly, the U.S. Patent and Trademark Office has specifically rejected evaluation of claims based on the “insoluble ambiguous” standard, but for reasons very different than the reasons presented by the Supreme Court. The case most on point is Ex Parte Miyazaki, Appeal No. 2007-3300 (BPAI 2008): “The USPTO is justified in using a lower threshold showing of ambiguity to support a finding of indefiniteness … because the applicant has an opportunity and a duty to amend the claims during prosecution to more clearly and precisely define the metes and bounds of the claimed invention and to more clearly and precisely put the public on notice of the scope of the patent. ‘We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation,'” citing Halliburton Energy Services v. M-I LLC,514 F.3d 1244, 1255 (Fed. Cir. 2008).
Given all of the current attention on patent troll litigation, much focus has been placed on the USPTO to ensure that patents are issued with claims with clear scope. Both Congress and the White House have stated the need for the patent office to issue patents having claims that meet the requirements of definiteness. The goal is to decrease the amount of litigation that is driven by patents with ambiguous claim language.
In a few months, the Federal Circuit will issue a new opinion in the Nautilus case. The basis of its decision will not be “insoluble ambiguity.” Once the decision issues, the IP community will certainly be interested to see how the above factors are balanced.
– by Lawrence Ashery