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May 26, 2010

Definitely

The CAFC standard for §112 ¶ 2 indefiniteness is lax. A panel rehearing petition in Enzo v. Applera (CAFC 2009-1281o) was denied, but Judge Plager, in dissent, had some choice words on the topic.

Judge Plager:

Despite the varying formulations that this court has used over the years in describing its "indefiniteness" jurisprudence to which the petitioner in this case points, the general conclusion from our law seems to be this: if a person of ordinary skill in the art can come up with a plausible meaning for a disputed claim term in a patent, that term, and therefore the claim, is not indefinite.1 At least not so indefinite as to run afoul of the statutory requirement that claims shall "particularly point[ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, second paragraph.

1 See, e.g., Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) ("Only claims 'not amenable to construction' or 'insolubly ambiguous' are indefinite." (citing Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1353 (Fed. Cir. 2003); Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338 (Fed. Cir. 2003); Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001))).

The corollary derived from this understanding is that if several persons of ordinary skill come up with compet-ing but plausible interpretations of a disputed term--as is typically the case with competing "expert witnesses" in patent infringement litigation--the problem is not one of an inherently ambiguous and potentially indefinite claim term, but rather the problem becomes simply one of picking the "right" interpretation for that term.2 Since picking the "right" interpretation--claim construction--is a matter of law over which this court rules, and since the view of the trial judge hearing the case is given little weight, so that the trial judge's view on appeal becomes just a part of the cacophony before this court, it is not until three court of appeals judges randomly selected for that purpose pick the "right" interpretation that the public, not to mention the patentee and its competitors, know what the patent actually claims. The inefficiencies of this system, and its potential inequities, are well known in the trade.

2 Broad, to the point of inherently ambiguous, claim drafting is not just a matter of poor drafting skills on the part of some lawyers who prosecute patent applications. On the contrary, the art of broad claim drafting is a prized talent--clients are openly urged to use "broad patent protection both offensively to block competitors from the marketplace, and defensively to serve as a bargaining chip against potential patent infringement suits" and to "file patents to cover all aspects of the core technology . . . to create a 'picket fence' of protection." David J. Dykeman and Joanna T. Brougher, File, Protect, Update, Defend, Corporate Counsel, May 1, 2010, http://www.law.com/jsp/cc/PubArticleCC.jsp?id=1202447671049.

The United States Patent and Trademark Office ("PTO"), by contrast, appears to be taking steps to give the statutory requirement real meaning. In 2008, the patent examining corps was given a five-page instruction on "Indefiniteness rejections under 35 U.S.C. 112, second paragraph." The memo initially observes that "[t]he primary purpose of the definiteness requirement for claim language is to ensure that the scope of the claims is clear so that the public is informed of the boundaries of what constitutes infringement of the patent." The memo reviews in detail a recent opinion of this court, following which the memo states the position of the PTO: "If the language of a claim, considered as a whole in light of the specification and given its broadest reasonable interpretation, is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation then a rejection of the claim under 35 U.S.C. 112, second paragraph, is appropriate."

This memo was followed later in the year by a rare precedential opinion issued by the Board of Patent Appeals and Interferences ("Board") in Ex parte Miyazaki. The Board noted that this court has in post-issuance patent infringement cases held "that the definiteness requirement 'does not compel absolute clarity' and '[o]nly claims "not amenable to construction" or "insolubly ambiguous" are indefinite.'" Recognizing that this court has never set forth a different standard of review for indefiniteness under 35 U.S.C. § 112, second paragraph, for pre-issuance pending claims as compared with post-issuance patent claims, the Board concluded that the Federal Circuit's reading of the indefiniteness requirement was counter to the PTO's broader standard for claim construction during prosecution. Accordingly, the Board announced that, "rather than requiring that the claims are insolubly ambiguous, we hold that if a claim is amenable to two or more plausible claim constructions, the USPTO is justified in requiring the applicant to more precisely define the metes and bounds of the claimed invention by holding the claim unpatentable under 35 U.S.C. § 112, second paragraph, as indefinite."

The Board is clearly right in recognizing that the circumstances are different between pre-issuance and post-issuance application of the definiteness standard with regard to claim terms. At the same time, the PTO and the Board are clearly right in insisting that, if the public notice function of the patent law is to be honored, claim terms must particularly point out and distinctly claim the subject matter of the invention. In my view, this court's definiteness doctrine could go considerably further in promoting that objective than it currently does, with the not inconsequential benefit of shifting the focus from litigation over claim construction to clarity in claim drafting.

To begin the discussion of how this court could move in that direction, I would grant the petition for panel rehearing. The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. It is time for us to move beyond sticking our fingers in the never-ending leaks in the dike that supposedly defines and figuratively surrounds a claimed invention. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.

Patent Hawk filed an amicus brief before the Supreme Court in the Bilski case urging a tightening up of the indefiniteness standard. Blog entries on the topic: Lever; Requisite Clarity; Definitely Not.

Posted by Patent Hawk at May 26, 2010 4:41 PM | § 112

Comments

There's something not quite right when the Office insists on a broadest interpretation, and then quibbles because broad includes more than one plausible thing.

Shouldn't the Office rather apply a narrowest interpretation, put that interpretation on the record and then leave it up to the applicant to say, on the record, just how much more than the narrow interpretation the applicant thinks he has a right to?

Posted by: Pedantic Pete at May 27, 2010 3:15 AM

I believe the way they've got it organized -- this double standard deal -- is that the examiner applies the broadest interpretation to sweep in as much PA as possible and screw the applicant. If the applicant prevails in the PTO, then the court applies the narrowest possible interpretation to exclude as many infringers as possible and screw him there.

Ya' gotta' love the symmetry.

Posted by: Babel Boy at May 27, 2010 7:56 AM

"There's something not quite right when the Office insists on a broadest interpretation, and then quibbles because broad includes more than one plausible thing."

There's only something not quite right in that instance if you don't understand the difference between breadth and definiteness. Obviously you're a poor soul in that category of people.

"Shouldn't the Office rather apply a narrowest interpretation, put that interpretation on the record and then leave it up to the applicant to say, on the record, just how much more than the narrow interpretation the applicant thinks he has a right to?"

What point does that serve? BRI on the other hand serves the point of ensuring that the PTO considered the broadest reasonable interpretation and vetted the patent based on all the subject matter potentially encompassed thereby delivering an assured completely examined claim. Without that, a court may later on hold the claim to be broader and then the claim hasn't even really been vetted by the PTO across its whole breadth. Not to mention that the applicant might discover after issue that his claim actually covers many things he couldn't even dream about at the time he supposedly made his invention or argued with an examiner.

BRI wins hands down in all situations. Sorry.

"then the court applies the narrowest possible interpretation to exclude as many infringers as possible and screw him there."

Nobody, especially not the CAFC, makes a DC apply the narrowest possible interpretation. Where do you get these notions BB?

Posted by: 6000 at May 27, 2010 9:11 AM

"BRI on the other hand serves the point of ensuring that the PTO considered the broadest reasonable interpretation and vetted the patent based on all the subject matter potentially encompassed thereby guaranteeing a claim that has multiple plausible meanings, whereas "What point does that serve? is the point of a well defined and captured in the record meaning of the claims, and if done correctly is built from the lowest common denominator up by an examiner skilled in the art and understanding the application. It would be a truly professional job.

"applicant might discover after issue that his claim actually covers many things he couldn't even dream about"

Isn't that the entire F'n problem that you and many others bitch about with over-broad claiming? You embrace the very mechanism that is your bane.

Pull your head out of your ass and think for yourself 6000.

Posted by: Pedantic Pete at May 27, 2010 1:17 PM

"thereby guaranteeing a claim that has multiple plausible meanings"

That does not necessarily do any such thing. Like I said, you're obviously someone that doesn't understand the difference in breadth and indefiniteness or indefiniteness's twin brother multiple plausible meanings. Until you can grasp the difference it doesn't matter what I tell you, you're going to take it the wrong way. Go read Miyazaki, that might help you.

"is the point of a well defined and captured in the record meaning of the claims, and if done correctly is built from the lowest common denominator up by an examiner skilled in the art and understanding the application. It would be a truly professional job."

You're making so many assumptions that it is sickening. You are assuming, inter alia, that the applicant plays along amicably, that the examiner corps could even do a "professional" job in those instances, and that the app wasn't up for allowance right then using that super narrow interpretation (he never has a chance to respond if the case issues, as it likely might with a super-narrow construction applied). All of those are very bad assumptions to make. And a failure of any or all of them, inter alia, to magically happen nullifies the supposed "point".

I'm not bothering with your hypo any more because it fails on so many levels whereas BRI works out quite nicely IRL for all involved if they're even half conscious rather than requiring that they be super-examiners/applicants for it to have even a remote chance at working.

But gl getting it adopted.

"Isn't that the entire F'n problem that you and many others bitch about with over-broad claiming?"

Um, no? We, or I should say "I", bich because it is either blatantly anticipated and/or is likely just being used to make a generic claim for some species/things that should be in distinct groups coming in the deps (most of the btching is here). Or I btch because it is claiming more than he is entitled to by the statute because he didn't really possess the full invention (See Ariad). If a claim happens to end up legitimately covering something invented after I issued it whilst applying BRI I have no real issues with that so long as the principles in Ariad are observed. I can't think of what would have led you to believe otherwise.

And let me be clear, I prefer reviewing an overbroad claim to an indefinite "multiple possible meanings" claim anyday.

Posted by: 6000 at May 27, 2010 2:43 PM

"Or I btch because it is claiming more than he is entitled to by the statute because he didn't really possess the full invention (See Ariad)."

I think it's a pretty safe bet that you've never been anywhere close to meeting the burden for establishing a prima facie case of lack of WD.

Posted by: pong at May 27, 2010 5:19 PM

Pedantic,

I agree with Plager's dissent. The "definiteness" requirement of paragraph 2 of 35 USC 112 should be enforced more strictly than Federal Circuit precedent might suggest. I also agree with you that there's nothing inherently wrong with the term "substantially." But terms like "substantially" which are relative should be defined carefully in the patent specification (as should other key claim terms) so that the meaning of the term is clear to at least the PHOSITA, especially in the context of the claimed invention.

I also wouldn't mind a more stringent "enablement"/"written description" requirement under paragraph 1. As I've expressed before, 35 USC 112 should be the initial screen for poorly defined inventions (including the claimed method in Bilski), not 35 USC 101.

BTW, I haven't forgotten I owe you a response to your question relating to the In re Vaidyanathan thread. Stay tuned

Posted by: EG at May 28, 2010 6:45 AM

Thanks EG,

I lean towards Plager's viewpoint myself. I also think that an anti-patent mindset has overtaken the use of BRI as a "gotcha" tool that inadvertinently creates the "breadth" mindset that far too many have taken for granted and as exmplified with a comment like 6000's "claim actually covers many things he couldn't even dream about". Clearly, if the inventor has passable claims to something he couldn't even dream about, those claims are much too broad for that right to be given him. Can you possess something that you cannot even dream about? BRI is wielded by lazy people looking for a quick count, rather than by professionals understanding what is in an application, what an applicant wants, and what he deserves given what he has offered. BRI guarantees claims that must be adjudicated in court.

I look forward to the constitutional separation of powers discussion. You may also want to review the Executive Branch's statement on separation of powers (while that piece mostly discusses the danger of the legislative branch usurping power that has been separated into the traditional three structures, the logic of those arguments applies with equal force to the executive co-option of the judicial branch).

Posted by: Pedantic Pete at May 28, 2010 7:25 AM

"I think it's a pretty safe bet that you've never been anywhere close to meeting the burden for establishing a prima facie case of lack of WD. "

I on the other hand think it's a pretty safe bet that I do it every other week, at least.

Posted by: 6000 at May 28, 2010 12:38 PM

" lean towards Plager's viewpoint myself. I also think that an anti-patent mindset has overtaken the use of BRI as a "gotcha" tool that inadvertinently creates the "breadth" mindset that far too many have taken for granted and as exmplified with a comment like 6000's "claim actually covers many things he couldn't even dream about". "

Let me clarify my statement where I was talking about things he couldn't even dream about. I'm am not talking about "things", embodiments, that are covered within the breadth of his claim. I am talking about things, "interpretations" that he couldn't even have dreamed about. Sorry for being ambiguous with the word "things" although in context you should have seen that I have distinguished between the two concepts on many many occasions over the course of the last few yesrs and do know the difference.

Posted by: 6000 at May 28, 2010 12:44 PM

Oh, my bad, I was responding to Pete in that last post, the reason he didn't understand what "things" I was talking about is because he himself doesn't grasp the difference. I thought that was another post by EG, who probably does grasp the difference.

Although, Pete, you are right about the overbreadth of the claims, and that was what was being addressed somewhat in Ariad.

'BRI is wielded by lazy people looking for a quick count, rather than by professionals understanding what is in an application, what an applicant wants, and what he deserves given what he has offered. BRI guarantees claims that must be adjudicated in court."

It might be wielded by those lazy people, but it is also wielded by those doing the best job an examiner could do. If you understood what the true implications of the BRI standard are then you would know that as well.

"BRI guarantees claims that must be adjudicated in court.""

Conclusory statement much? What evidence or reasoning to do you to make such an absurd statement?

Posted by: 6000 at May 28, 2010 12:49 PM