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June 29, 2009

Requisite Clarity

In Bilski, the rogue CAFC ruled on the wrong grounds, and in the process warped the law, by setting in stone what were intended as guidelines. To afford case-by-case consideration, a court writes itself wiggle room. Instead, the CAFC tends to sew itself straightjackets. To invalidate Bilski's claim, all SCOTUS need do is reaffirm the definiteness requirement, and then correct the CAFC's errant way regarding patentable process subject matter.

What the Supreme Court needs to do with Bilski, reversing the CAFC on two fronts, is insist on "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention," and again clarify the signposts of patentability, while removing the blocks that the CAFC had cast in stone.

In Bilski, the CAFC took clues to patentability and rendered them exclusive metrics. ("Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." - Diamond v. Diehr, 450 U.S. 175 (1981)) The law requires nothing more than a "new and useful process," or its "improvement thereof". In KSR, the Supreme Court chided the CAFC about its rigidity. Another reminder is in order, as old habits die hard. A very long-standing doctrine, Congress and SCOTUS have consistently left patentable subject matter open-ended with regard to technology, including process claims, whilst rightfully shutting the door to "laws of nature, natural phenomena, and abstract ideas." Patentability needs no further circumscription.

On the other hand, the CAFC has been far too lenient in enforcing definiteness, practically eviscerating the statute's requirement for clarity. From the CAFC in Praxair v. Advanced Technology Materials (2008) -

The second paragraph of 35 U.S.C. § 112 requires that the specification of every patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." This requirement serves a public notice function, ensuring that the patent specification adequately notifies the public of the scope of the patentee's right to exclude. See Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338 (Fed. Cir. 2003). A claim satisfies the definiteness requirement of § 112 "[i]f one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A claim will be found indefinite only if it "is insolubly ambiguous, and no narrowing construction can properly be adopted . . . ." Id. On the other hand, "[i]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Id.

Neither the Congress nor the Supreme Court had such laxity in mind. From the Supreme Court's Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (2002) -

The patent laws "promote the Progress of Science and useful Arts" by rewarding innovation with a temporary monopoly. U.S. Const., Art. I, §8, cl. 8. The monopoly is a property right; and like any property right, its boundaries should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in "full, clear, concise, and exact terms," 35 U.S.C. § 112 as part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring the invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond the inventor's exclusive rights. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989).

In its Bilski decision, the Supreme Court needs to right the definiteness requirement to "full, clear, concise, and exact terms," and remind "that Congress intended statutory subject matter to 'include anything under the sun that is made by man.'"

This is a companion piece to Definitely Not.

Posted by Patent Hawk at June 29, 2009 9:04 AM | § 101

Comments

Hawk,

Well put.

Posted by: Noise above Law at June 29, 2009 9:37 AM

Hawk finally comes around to the conclusion I came to years ago. Good going Hawk. Now, all we need is USSC to back us up. I would love them to all of a sudden take this position on Bilski and leave 101 concerns for another day. That way I'd get the best of both worlds, 112 properly interpreted, and 101 properly interpreted (sometime in a few years).

However, USSC won't do it.

And, I almost have 112 100% properly interpreted for the purposes of examination thanks to Miyazaki :)

I note that the issue your position, and mine, on 112 is hindered by the statute granting a presumption of validity after issue. It is a real shame, that statute should be clarified or something to provide an exception to 112.

Posted by: 6000 at June 29, 2009 9:40 AM

Typical 6000 crap.

6, You must really work hard to be so ignorant.

Pick a topic:
- 101 properly interpreted - what Hawk actually said versus the notion that the interpretation will be made in a few years.
- Miyazaki.
- hindrance by the statute granting a presumption of validity after issue.
- clarification for an exception to 112 - wtf does that mean?

Posted by: Noise above Law at June 29, 2009 10:03 AM

"For this reason, the patent laws require inventors to describe their work in "full, clear, concise, and exact terms," 35 U.S.C. § 112 as part of the delicate balance the law attempts to maintain between inventors ... and the public".

Problem is though, that the words "full, clear, concise, and exact" are themselves vague, unclear, inexact and verbose.

Posted by: step back at June 29, 2009 10:26 AM

"Problem is though, that the words "full, clear, concise, and exact" are themselves vague, unclear, inexact and verbose."

I have to disagree in so far as they are clear, exact, and non-verbose enough for the purposes of being a statute. The courts could do a better job interpreting them than "aw shucks we don't know what they mean so let's ignore them".

NAL, the men are talking, run along home now ok?

Posted by: 6000 at June 29, 2009 11:19 AM

6,

LOL - seriously, you cannot be included in the set "the men are talking" - not even in your wildest dreams.

"...clear, exact and non-verbose enough for the purpose of being a statute." - Hilarious, coming from the person who cannot comprehend a statute.

Posted by: Noise above Law at June 29, 2009 11:44 AM

6: Ignorant and misogynistic, all in one thread.

Nice job.

Posted by: Anonymous at June 29, 2009 2:14 PM

I didn't ask for lip, I asked you to get home. I know you have trouble with english, ¿Habla Español? Ir a casa.

Posted by: 6000 at June 29, 2009 2:51 PM

Mientras esté allí, me hacen un sandwich.

Posted by: 6000 at June 29, 2009 2:51 PM

Y dejar de publicar como Anónimo

Posted by: 6000 at June 29, 2009 2:53 PM

Nice,

Ignorant in more than one language.

We should coin a new phrase: Ignorant Savant.

Posted by: Noise above Law at June 29, 2009 3:32 PM

Hawk,

How can you determine whether Bilski's claims are indefinite if you don't have access to the spec and drawings? Or do you? Exactly what part of which claim is indefinite and why?

Moreover, the SCt. is an "appellate" court. They are not supposed to raise new grounds of rejection during appeal. So why do you urge them to do so?

Posted by: step back at June 30, 2009 1:46 AM

"So why do you urge them to do so?"

He's desperate to save his own claims to toolbars. All MS need do is stall but awhile longer.

Posted by: 6 at June 30, 2009 5:49 AM

"Congress intended statutory subject matter to 'include anything under the sun that is made by man.'"

I agree.

Posted by: John Prosecutor at June 30, 2009 2:00 PM

PH,

I certainly agree with your view. Section 101 shouldn't be the screen/filter. I'm perfectly fine with making Section 112, paragraph 2, tougher; I would also suggest similar tightening in paragraph 1 around the "enablement" requirement at least to ensure that the patent disclosure enables the scope of the claims.

Posted by: EG at July 1, 2009 3:40 AM

Hat tip to P. Zura for pointing out a new USPTO info page.

A copy of Bilski's application can now be seen here at around page A-79:

http://www.uspto.gov/web/offices/com/sol/2007-1130bilski_joint_appendix.pdf

Also interesting is the fact that a first Board of Appeals (comprised of 3APJs) apparently REVERSED the Examiner's 101 rejection

Posted by: step back at July 1, 2009 3:59 AM

Oops. No edit button here.
I take back about first BPAI decision. That was Lundgren. I mistakenly thought it was part of Bilski.

Posted by: step back at July 1, 2009 4:05 AM

Yeah I had thought that I had seen a publicly available copy of the bilski app but couldn't remember where.

Posted by: 6000 at July 1, 2009 11:43 AM

One need only look to the Rader dissent to get a glimpse of how the S.C. should and hopefully will rule in Bilksi.

I don't think there is a need for outrage at the "rogue CAFC." The majority decision in Bilski was designed to highlight the inconsistency in the S.C. precedent and frame up the issues for reversal and clarification.

Please get a clue

Posted by: Dont worry at July 5, 2009 7:03 AM

I just reread part of Bilski, namely the concurring opinion by Dyk and Linn.

If ever there were a blueprint for the way the USSC will rule, it is there.

Anyone care to wager a few thousand on it?

The USSC is loathe to ignore history. Look at all their recent decisions. Where ever the legislative history indicates the correct conclusion, they take it.

Posted by: 6000 at July 5, 2009 3:03 PM

I also should note that there was a commenter on this very site whom had wondered where I had seen a history of the term "art".

Look to the decison of bilski and the citations therein.

Posted by: 6000 at July 5, 2009 3:12 PM

6000,

For once you hit the nail on its head. The term, "useful arts" will indeed be a focus of the Supreme Court analysis because that is the terminology used in the US Constitution. It is also part of the terminology used in 35 USC 101 given that "process" is defined in 100(b) to include art. Thus 101 allows for a patent for any new and useful art. The question then becomes, what is a useful art as opposed to a nonuseful art? Apparently the art of thinking about abstract ideas is not a useful art and neither is pure mathematics as such.

Posted by: step back at July 6, 2009 1:51 AM