High Court Nixes ‘Amenable to Construction,' ‘Insolubly Ambiguous' Indefiniteness Rules

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By Tony Dutra

June 2 — The phrases “amenable to construction” and “insolubly ambiguous” for purposes of identifying an indefinite patent claim “lack the precision” demanded by 35 U.S.C. §112, para. 2, the Supreme Court held on June 2.

The decision eliminates the standard used by the U.S. Court of Appeals for the Federal Circuit and vacates a ruling that had been in favor of patentee Biosig Instruments Inc.

The high court held 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.”

The unanimous decision, written by Judge Ruth Bader Ginsburg, remanded the case for reconsideration by the appeals court.

Ambiguity in Patent on Exercise Equipment

Biosig is assignee of a patent (U.S. Patent No. 5,337,753) directed to a heart rate monitor typically used on devices such as exercise bikes, treadmills and stair climbers.

“[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.”Justice Ruth Bader Ginsburg

The appeals court ruled against competitor Nautilus Inc. in concluding that the term “spaced relationship”—the distance between two electrodes on the exercise machine's handlebar—could be calculated knowing the intended functionality of the claim. Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 2013 BL 111212, 106 U.S.P.Q.2d 1554 (Fed. Cir. 2013).

The relevant functionality—isolating electrocardiogram signals and cancelling out electromyogram (EMG) signals coming from such differences as how hard one grips the left or right side of the handlebar—was defined in “whereby” clauses.

The court relied on the standard—“A claim is indefinite only when it is ‘not amenable to construction' or 'insolubly ambiguous'”—first set in Datamize L.L.C. v. Plumtree Software Inc., 417 F.3d 1342, 1347, 75 U.S.P.Q.2d 1801 (Fed. Cir. 2005).

The high court granted cert on Nautilus's petition on Jan. 10. Friends of the court filed 13 briefs roughly in line with Nautilus's position, but the U.S. government joined three other amici in asking the high court to reject Nautilus's proposed alternative.

The court held oral argument in the case on April 28.

Court Cites ‘Delicate Balance.'

“We conclude that the Federal Circuit's formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement,” the court said in the June 2 opinion.

The court described the requirement for a “delicate balance,” recognizing “the inherent limitations of language” on one hand and adequate notice to skilled artisans to avoid a “zone of uncertainty” on the other.

The court accepted Nautilus's characterization of the problem—that clever patent claim drafters deliberately build ambiguity into the claims to get as broad a scope as possible. “[A]bsent a meaningful definiteness check, we are told, patent applicants face powerful incentives to inject ambiguity into their claims,” the court said.

The high court's decision “will not result in a high sea change in terms of invalidating large swaths of patents.”Shawn G. Hansen of Nixon Peabody LLP

And it repeated that the frame of reference for analysis must be that of the “skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.”

The high court acknowledged that the appeals court frequently uses terms such as “insolubly ambiguous” as shorthand for “a more probing inquiry,” but it said, “in applying patent-law doctrines, we must ensure that the Federal Circuit's test is at least ‘probative of the essential inquiry,' ” quoting Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 41 U.S.P.Q.2d 1865 (1997).

The court identified in a footnote three cases since 2001, including Datamize, that appeared to rely exclusively on the phrases without the corresponding “probing inquiry.” And it suggested that the Patent and Trademark Office's standard given to examiners, in the Manual of Patent Examining Procedure §2173.02(I)—no indefiniteness “if some meaning can be gleaned from the language”—was equally imprecise.

And in another footnote, the court commented on the Federal Circuit's argument that a “permissive definiteness standard” accords with the presumption of validity of a patent under 35 U.S.C. §282. The presumption of validity does not affect the definiteness standard, the court said, but it might “trigger the clear-and-convincing standard” as related to “factual findings subsidiary to the ultimate issue of definiteness.” However, the court said, “We leave those questions for another day.”

The court determined that it would not apply its new definiteness standard to the facts of the instant case, leaving that task to the Federal Circuit on remand.

John D. Vandenberg of Klarquist Sparkman LLP, Portland, Ore., represented Nautilus, which called for a standard whereby indefiniteness would be found when “multiple reasonable interpretations” of claim scope existed. The high court noted that alternative to the extent that it might bear on the Federal Circuit's analysis on remand, but it said in a footnote, “Notably, however, all three panel members found Nautilus' arguments unavailing.”

Mark D. Harris of Proskauer Rose LLP, New York, represented Biosig. In a statement, Harris said of the footnote, “That is a clear signal to the Federal Circuit on remand that our patent is not indefinite.”

Assistant to the Solicitor General Curtis E. Gannon, represented the government.

Practitioners Predict Changes in Litigation

“The Supreme Court's ‘reasonable certainty' standard may result in an increasing number of validity challenges under 35 U.S.C. §112,” Joshua I. Rothman of Fitzpatrick, Cella, Harper & Scinto LLP, New York, predicted in an email to Bloomberg BNA. “The ‘reasonable certainty' standard will likely help curtail excessive ambiguity during patent prosecution, and thereby reduce the number of issued patents with uncertain claim scope,” he added.

However, Shawn G. Hansen of Nixon Peabody LLP's Silicon Valley office said that the high court's decision “will not result in a high sea change in terms of invalidating large swaths of patents.” His colleague in the firm's Chicago office, Paul R. Kitch, agreed.

“All patents in all areas of technology could be susceptible to indefiniteness challenges depending on how the Federal Circuit applies the new Nautilus test.”James R. Barney of Finnegan, Henderson, Farabow, Garrett & Dunner LLP

Kitch predicted that the Federal Circuit will continue to perform its analysis in the same way without using “the no-no phrases of a claim being ‘amenable to construction,' and not ‘insolubly ambiguous.' ”

However, he did have one prediction of a change—in litigants' behavior: “I do think this decision will cause litigants to introduce more expert testimony as to the meaning or unclear meaning of disputed terms from the point of view of one skilled in the art as doing so may ‘trigger the clear-and-convincing-evidence' standard referenced, but not decided by the Court.”

Noting that “the interpretation of the test has been left in the first instance to the Federal Circuit and the district courts,” Kyle C. Musgrove of Haynes and Boone LLP, Washington, was mostly in agreement. However, he referred to the high court's criticism—that the Federal Circuit's standard “tolerate[d] some ambiguous claims but not others”—as predictive that “the number of invalidity challenges based on indefiniteness are likely to increase.”

Musgrove, too, saw changes ahead for litigators.

“It is likely claim construction (and the corresponding indefiniteness challenges) will see more expert declarations and/or reports submitted earlier in the process given the focus of the test on ‘those skilled in the art,' ” he told Bloomberg BNA. “Additionally, arguments that the scope of the overall claim is unclear (even if the specific terms of a claim are capable of construction) also may become more frequent.”

Benjamin C. Hsing of Kaye Scholer LLP, New York, had a similar comment.

“Under the Federal Circuit standard, once a district court was able to construe the meaning of a claim term, the term would be deemed definite,” he told Bloomberg BNA. “As a result, defendants were often hesitant to advocate a claim construction if they also wanted to argue that the term was indefinite. Under today's ruling, defendants are now free to argue that a claim term is indefinite and at the same time advocate a construction for that term.”

James R. Barney of Finnegan, Henderson, Farabow, Garrett & Dunner LLP, Washington, saw more significant change than any of the other commenters, saying that the new standard is “a much lower standard than ‘insolubly ambiguous.' ”

Barney also predicted an increase in challenges and said it would be relevant in all industries as well.

“All patents in all areas of technology could be susceptible to indefiniteness challenges depending on how the Federal Circuit applies the new Nautilus test,” Barney said. “For instance, it will be interesting to see how this new test applies to so-called terms of degree, like ‘about' and ‘approximately.' These types of terms are very common in patent claim drafting, so it will probably not be long before one of them is challenged under the new Nautilus test.”

To contact the reporter on this story: Tony Dutra in Washington at adutra@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www.bloomberglaw.com/public/document/Nautilus_Inc_v_Biosig_Instruments_Inc_No_13369_2014_BL_151635_US_.

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