{"id":141,"date":"2014-06-05T13:37:52","date_gmt":"2014-06-05T19:37:52","guid":{"rendered":"http:\/\/harrysurden.com\/wordpress\/?p=141"},"modified":"2014-06-09T10:55:12","modified_gmt":"2014-06-09T16:55:12","slug":"supreme-court-gives-patent-rule-new-bite-definiteness","status":"publish","type":"post","link":"https:\/\/www.harrysurden.com\/wordpress\/archives\/141","title":{"rendered":"Supreme Court Gives Patent Law New Bite (Definiteness)"},"content":{"rendered":"

Patent Law\u2019s Definiteness Requirement Has New Bite<\/span><\/p>\n

The Supreme Court may have shaken up patent law quite a bit with its recent opinion in the\u00a0Nautilus v. Biosig<\/a>\u00a0case (June 2, 2014).<\/p>\n

At issue was patent law’s “definiteness” requirement, which is related to patent boundaries. As I (and\u00a0others<\/a>) have\u00a0argued<\/a>, uncertainty about patent boundaries (due to vague, broad and ambiguous claim language), and lack of notice as to the bounds of patent rights, is a major problem in patent law.<\/p>\n

I will briefly explain patent law’s\u00a0definiteness requirement<\/a>, and then how the Supreme Court’s new definiteness\u00a0standard\u00a0may prove to be a significant change in patent law. In short – many patent claims – particularly those with vague or ambiguous language – may now be vulnerable to invalidity attacks following the Supreme Court’s new standard.<\/p>\n

Patent Claims: Words Describing Inventions<\/span><\/p>\n

In order to understand “definiteness”, it’s important to start with\u00a0some patent law basics. \u00a0Patent law gives the patent holder\u00a0exclusive rights over inventions –\u00a0the right to prevent others from making, selling, or using<\/a>\u00a0a patented invention. \u00a0How do we know what inventions are covered by a particular patent? \u00a0They are described in the patent\u00a0claims.\u00a0<\/em><\/p>\n

Notably, patent claims describe the inventions that they cover using (primarily)\u00a0words<\/strong>.<\/em><\/p>\n

For instance, in the Supreme Court case at issue, the patent holder –\u00a0Biosig<\/strong>\u00a0– patented\u00a0an invention –\u00a0a heart-rate monitor<\/a>. \u00a0Their patent used the following claim language to delineate\u00a0their invention :<\/p>\n

I claim a\u00a0heart rate monitor<\/strong>\u00a0for use in association with exercise apparatus c<\/em>omprising\u2026<\/em><\/p>\n

a\u00a0live electrode<\/strong><\/em><\/p>\n

and a\u00a0first common electrode<\/strong>\u00a0mounted on said first half<\/em><\/p>\n

\u00a0In\u00a0spaced relationship<\/strong>\u00a0with each other\u2026\u201d<\/em><\/p>\n

\"Screen<\/a><\/p>\n

So basically, the invention claimed was the\u00a0kind of heart rate monitor that you might find on a treadmill. \u00a0 The portion of the claim above\u00a0described one part of the overall invention\u00a0– two electrodes separated by some amount of space. \u00a0Presumably the exercising person holds on to these electrodes as she exercises, and the device reads the heart rate.<\/p>\n

( Note: only a small part of the patent claim is shown – the actual claim is much longer)<\/p>\n

Patent Infringement: Comparing Words to Physical Products<\/span><\/p>\n

So what is the relationship between the words of a patent claim and patent infringement?<\/p>\n

In a typical patent infringement lawsuit, the patent holder alleges that the defendant is making or selling some product or process (here a product) that is covered by the language of a patent claim (the \u201caccused product\u201d).\u00a0 To determine literal patent infringement, we compare the words of the patent claim to the defendant\u2019s product, to see if the defendant’s product corresponds to what is\u00a0delineated in the plaintiff’s patent claims.<\/p>\n

For instance, in this case, Biosig alleged\u00a0that Nautilus was selling a competing, infringing heart-rate monitor.\u00a0 Literal patent infringement would be determined by comparing the\u00a0words\u00a0<\/i>of Biosig\u2019s patent claim (e.g. \u201ca heart rate monitor with a live electrode\u2026\u201d) to\u00a0a physical object<\/em>\u00a0– \u00a0the competing heart-rate monitor product that Nautilus was selling\u00a0(e.g. does Nautilus\u2019 heart rate monitor have a part that can be considered a \u201clive electrode\u201d)?<\/p>\n

Literal patent infringement is determined by systematically marching through each element (or described part) in Biosig’s patent claim, and comparing it to Nautilus’s competing product. If Nautilus’ competing product has every one of the “elements” (or parts) listed in Biosig’s patent claim, then Nautilus’s product would literally infringe Biosig’s patent claim.<\/p>\n

If patent infringement is found, a\u00a0patent holder can receive damages or in some cases, use the power of the court\u00a0 to prevent the competitor from selling the product through an injunction.<\/p>\n

Patent Claims – A Delicate Balance with Words<\/span><\/p>\n

Writing patent claims involves a delicate balance.\u00a0 On the one hand, a patent claim must be written in broad enough language that such a patent claim will cover competitors’ future products.<\/p>\n

Why? \u00a0Well, imagine that Biosig had written their patent claim narrowly. \u00a0This would mean that in place\u00a0of the broad language actually used (e.g. “electrodes in a spaced relationship”), Biosig had instead described the particular characteristics of the heart-rate monitor product that Biosig sold. \u00a0For instance, if Biosig’s heart-rate monitor product had two electrodes that were located exactly 4 inches apart, Biosig could have written their patent claim with language saying, “We claim a heart rate monitor with two electrodes\u00a0exactly\u00a0<\/i>4 inches apart” rather than the general language they actually used, the two electrodes separated\u00a0by a “spaced relationship”<\/p>\n

However, had Biosig written such a narrow patent, it might\u00a0not be commercially valuable. \u00a0Competing makers of heart rate monitors such as Nautilus could easily change their products to \u201cinvent around\u201d the claim so as not to infringe. A competitor might be able to avoid literally infringing by creating a heart-rate monitor with electrodes that were 8 inches apart. \u00a0For literal infringement purposes, a device with electrodes 8 inches apart would not literally infringe a patent that claims electrodes “exactly 4 inches apart.”<\/p>\n

From a patent holder\u2019s perspective, it is not ideal to write a patent claim too narrowly, because for a patent to be valuable, it has to be broad enough to cover the future products of your competitors in such a way that they can\u2019t easily \u201cinvent around\u201d and avoid infringement. \u00a0A patent claim is only as valuable (trolls aside) as the products or processes that fall under the patent claim words. \u00a0If you have a patent, but its claims do not cover any actual\u00a0products or processes\u00a0in the world because it is written too narrowly, it will not be commercially valuable.<\/p>\n

Thus,\u00a0general or abstract words (like “spaced relationship”) are often beneficial for patent holders, because they are often linguistically flexible enough\u00a0to cover more variations of competitors’ future products.<\/p>\n

Patent Uncertainty – Bad for Competitors (and the Public)<\/span><\/p>\n

By contrast, general, broad, or abstract claim words are often not good for competitors (or the public generally).\u00a0 Patent claims delineate the boundaries or \u201cmetes-and-bounds\u201d of patent legal rights \u00a0Other firms would like to know where their competitors’ patent rights begin and end. \u00a0This is so that they can estimate\u00a0their risk of patent liability, know when to license, and in some cases, make\u00a0products that avoid infringing\u00a0their competitors’ patents.<\/p>\n

However, when patent claim words are abstract, or highly uncertain, or have multiple plausible interpretations, firms cannot easily determine where their competitor\u2019s patent rights end, and where they have the freedom to operate. \u00a0This can create a zone of uncertainty around research and development generally in certain areas of invention, perhaps reducing overall inventive activity for the public.<\/p>

<\/p>\n

Uncertainty: Do Competitors Have Notice about Patent Boundaries?<\/span><\/p>\n

This is the problem\u00a0of inadequate patent notice – notice to the public (and competitors) about the boundaries of patent rights.\u00a0 The more uncertain patent claims are the less notice the public and competitors have about the boundaries of existing patents of others.<\/p>\n

For instance, consider the words at issue in Biosig’s patent claims, “\u201ca live electrode and a first common electrode in a\u00a0spaced relationship\u00a0<\/i>.\u201d<\/p>\n

Imagine that a competitor\u00a0like Nautilus wanted to make their own heart-rate monitor that did not infringe Biosig\u2019s patent. \u00a0Let’s assume that most heart-rate monitors need electrodes in order to detect the heart rate from the exercising person’s skin. In order to not infringe this particular patent, Nautilus would like\u00a0to make a product in which the electrodes\u00a0were\u00a0<\/i>not in a \u201cspaced relationship.\u201d\u00a0 If they could make such a product in which the electrodes were not in a spaced relationship, they would not be literally infringing Biosig’s patent claim (although they might infringe under the Doctrine of Equivalents).<\/p>\n

However, the phrase \u201cspaced relationship\u201d is vague, and has little content on its own. \u00a0Imagine that Nautilus is reading the patent claim, and is trying to make a product that has electrodes that are not in a “spaced relationship” to avoid infringing Biosig’s patent. \u00a0 How is\u00a0Nautilus (or any other company) supposed to know what a “spaced relationship” means? \u00a0How big should the spacing be be? \u00a0Does it cover all spaces?\u00a0(Contrast the improved clarity had Biosig claimed “electrodes spaced exactly 4\u00a0inches apart”)<\/p>\n

The rest of the patent (the specification) might provide some clues as to the meaning, but in general,\u00a0would be a lot of uncertainty for all competitors, when vague language like this is used in a patent claim. \u00a0Such uncertainty might deter inventive activity in this area for fear of infringement.<\/p>\n

Hence the fundamental problem for society with uncertain and vague patent claim words. \u00a0 If a competitor like Nautilus is to design a heart rate monitor, how are they to know if their product is infringing or not? \u00a0 How can they distinguish one design, in which the are in a spaced relationship (and therefore potentially infringing), from another design, in which the electrodes are not in a spaced relationship (and therefore not literally infringing), if the phrase “space relationship” conveys so little information.<\/p>\n

While vague language might benefit the patent holder, it should be clear that such uncertainty creates transaction costs for competitors and society at large. \u00a0It is difficult for others to tell where patent rights end, and where freed to operate begins. Moreover, such uncertainty allows certain parties to act opportunistically. \u00a0Patent holders routinely argue that patent claims\u00a0with vague words should be interpreted to cover products that they were never originally intended to cover<\/a>.\u00a0 Indeed, this is the very business model behind many\u00a0patent trolls who often\u00a0strategically purchase older patents with\u00a0broad or vague language\u00a0to extract settlements from companies using different, modern technologies.<\/p>\n

The Definiteness\u00a0Requirement<\/span><\/p>\n

Enter patent law\u2019s definiteness requirement.\u00a0\u00a0Section 112 of the patent act requires a patent applicant to have claims\u00a0<\/a><\/span>\u201cparticularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.\u201d<\/strong><\/em>\u00a0 This requirement of linguistic specificity has become known as the\u00a0definiteness<\/span>\u00a0requirement<\/strong>. \u00a0 If a patent claim has words that do not meet this standard – they are not definite enough – \u00a0and\u00a0the claim should be found invalid.<\/p>\n

The Federal Circuit\u2019s\u00a0Definiteness\u00a0Standard<\/span><\/p>\n

You might think by reading the language of Section 112 – the definiteness requirement – that for a patent claim to be valid, the claims must use\u00a0words\u00a0if reasonably high precision and specificity. \u00a0Correspondingly, one might assume that — given that the\u00a0statute requires that claims \u201cparticularly point out\u201d and \u201cdistinctly claim\u201d the invention — \u00a0that vague or general patent claim words would be routinely rejected as not definite enough. \u00a0However, for many years, this has not been the case.<\/p>\n

The reason is that for some time\u00a0the Federal Circuit Court of Appeals had a very\u00a0lax interpretation of the definiteness requirement. \u00a0Prior to the Supreme Court\u2019s Nautilus decision — under the Federal Circuit\u2019s definiteness jurisprudence — \u00a0 patent claim words did not have to be extremely precise or risk failing for lack of definiteness under 112.\u00a0 Rather, the Federal Circuit\u2019s interpretation of “definiteness”\u00a0seemed to prohibit only words of extreme subjectivity.<\/p>\n

According to the Federal Circuit\u2019s standard, a claim would only fail\u00a0for definiteness if such a claim had language that was \u201cinsolubly ambiguous\u201d and \u201cincapable of construction.\u201d \u00a0Under this standard, even very vague words, without a lot of content, meaning, and notice would pass muster under definiteness. \u00a0Only words completely incapable of interpretation – insolubly ambiguous – would fail. \u00a0If there was\u00a0some way<\/em>\u00a0that a court could imagine that a person of skill in the field could conceivably interpret\u00a0a phrase\u00a0to have some content, such a word would be considered definite enough — even if that phrase\u00a0had multiple meanings, or very little inherent content to guide others about the claim’s scope.<\/p>\n

Under this standard, extremely vague words passed muster as definite. \u00a0For instance, courts found that non-specific\u00a0phrases such as \u201csurrender value protected investment credits\u201d and \u201canaerobic condition\u201d – even though they provided very little notice about the\u00a0scope of the patent claim (i.e. What distinguishes an “anaerobic condition” from an “aerobic condition”)\u00a0– were sufficiently definite to meet Federal Circuit\u2019s lax requirement.<\/p>\n

Why were such vague words considered definite? \u00a0Because the courts found that such words were not “insolubly ambiguous.” \u00a0 Rather, there was\u00a0some way of interpreting<\/em>\u00a0them, even if these phrases were capable of multiple, plausible interpretations, and provided little or no notice to competitors as to what did, or did not, infringe.<\/p>\n

Definiteness: Subjectivity Prohibited Under Federal Circuit<\/span><\/p>\n

Were there any words that were too vague or ambiguous to actually fail the Federal Circuit\u2019s lax\u00a0definiteness requirement?\u00a0 Yes – albeit a very small subset of claim words: \u00a0words of\u00a0pure subjectivity<\/em>\u00a0were found to be too indefinite, even for the Federal Circuit’s low\u00a0definiteness bar.<\/p>\n

So, for instance,\u00a0 a patent claim requiring that a process produce a screen\u00a0that was\u00a0\u00a0\u201caesthetically pleasing\u201d was found to be indefinite. \u00a0 \u00a0Aesthetic preferences are purely subjective. \u00a0A competitor would have no way of knowing whether their product was “not aesthetically pleasing” (and therefore not literally infringing), or\u00a0was \u201caesthetically pleasing\u201d (and therefore potentially literally infringing). \u00a0“Aesthetically pleasing” is in the eye of the beholder.<\/p>\n

The upshot of the Federal Circuit\u2019s case law<\/span>\u00a0was that the definiteness requirement was, for many years, a non-issue. \u00a0A patent claim could have words that were vague, uncertain and ambiguous, or which had multiple plausible meanings, and which provided very little notice to competitors about what products were and were not infringing. It was very hard to fail the definiteness requirement – \u00a0patent claim language could still pass the Federal Circuit’s lax standards if it were capable of being resolved somehow according to the court.\u00a0 Thus, few definiteness challenges succeeded.<\/p>\n

The Supreme Court\u2019s Definiteness Standard<\/span><\/p>\n

In the\u00a0Nautilus v. Biosig<\/strong>\u00a0case, the Supreme Court has suddenly injected some new life into the\u00a0<\/span>definiteness requirement. The Court rejected the Federal Circuit\u2019s lenient, and hard-to-fail \u201cinsolubly ambiguous\u201d standard.<\/p>\n

What is the Supreme Court’s\u00a0new\u00a0definiteness standard? \u00a0For a patent claim to be definite, it must\u00a0“inform those skilled in the art [at the time the patent was filed] about the scope of the invention with reasonable certainty.\u201d<\/span><\/strong><\/p>\n

This is a broader, and more subjective standard than the Federal Circuit’s prior “insolubly ambiguous” standard. \u00a0Under the earlier standard, a patent claim term could be vague and ambiguous, but as long as there was some process to determine its interpretation, then it was sufficiently definite. Under the Supreme Court’s new standard, a claim term is indefinite if it fails to inform a person of skill in the field of invention about the scope of the patent claim.<\/p>\n

What does this mean? \u00a0Well, let’s imagine that in the Biosig case, that “a person skilled in the field of invention” is a mechanical engineer who designs exercise equipment for a living. \u00a0If such a hypothetical engineer were to read Biosig’s patent claim, and she could not reasonably\u00a0determine what heart-rate monitor designs\u00a0the patent claim did (and did not) cover \u00a0perhaps that claim might be found indefinite and invalid\u00a0under this new standard.<\/p>\n

If that hypothetical\u00a0engineer, looking at the patent claim with the words “spaced relationship”, and in light of information in other parts of the patent – the drawings and descriptions in the specification and the field of art generally \u00a0(e.g. might “spaced relationship” have a well-known meaning the field of equipment design) – could not figure out what “spaced relationship” meant within the context of placing heart-rate monitor electrodes, such a claim could be found indefinite, and therefore invalid. \u00a0However, note that the Supreme Court did not actually find the claims here to be indefinite – they merely remanded it to the Federal Circuit. \u00a0A finding of invalidity here is not a given, because the new standard gives judges considerable leeway.<\/p>\n

Definiteness Standard is Itself Indefinite<\/span><\/p>\n

Perhaps ironically, the Supreme Court’s new definiteness\u00a0standard is itself somewhat indefinite. \u00a0Unlike the Federal Circuit’s earlier lax standard, where largely only words of extreme subjectivity were not definite, and most other things seemed to be definite enough, under the Supreme Court’s new standard, it is harder to know what claim language is and is not definite. \u00a0This is not necessarily a bad thing, and is in line with the Supreme Court’s pattern of converting Federal Circuit rigid, but more legally certain “rules” into less certain, but more flexible “standards.”<\/p>\n

Improving Patent Claim Certainty<\/span><\/p>\n

\u00a0On the positive side, this\u00a0is perhaps one step on the road to patent rules that improve the level of certainty of patent claim scope as compared to those allowed today.<\/p>\n

Uncertainty about the scope of patent claim terms has been a persistent problem under recent patent rules. \u00a0Many patent claims fail to provide notice to the public about what is, and is not covered, by a particular patent claim.<\/p>\n

We can acknowledge that language has inherent uncertainties, and that it is impossible (and not necessarily desirable) to make patent claims perfectly certain in scope. Some level of uncertainty in patent claim language is inevitable and even desirable. \u00a0However, too much uncertainty about patent claims is generally not good for the public.<\/p>\n

As I have argued here<\/a>, just because we cannot make patent claims\u00a0perfectly certain<\/em>, does not mean that we cannot adopt procedures and rules that tend to make patent claims\u00a0incrementally more certain\u00a0<\/i>compared to a baseline.<\/p>\n

Scope-Clarifying Statements on the Public Record<\/span><\/p>\n

There are ways of incrementally improving certainty, and there are a number of low-cost interventions\u00a0that could potentially\u00a0incrementally improve overall patent certainty compared to today.<\/p>\n

For instance, when a patent examiner encounters a very vague word in examining a patent application, she could require a\u00a0scope-clarifying<\/strong>\u00a0statement from the patent applicant, on the public patent record.<\/p>\n

Our “notice” goal is to inform the public about what is or is not covered by a particular patent claim, so that third-party firms can know with reasonably certainty when their products do or do not infringe.<\/p>\n

Thus, when encountering a vague term, like “spaced relationship”, a patent examiner can ask the patent applicant two important scope-clarifying questions: What is X, and What is NOT X<\/em> . \u00a0For example, \u00a01) What does it mean for an electrode to be in a “spaced relationship”? (What is X?) \u00a02) What does it mean to have a non-spaced<\/em> relationship? (What is\u00a0not-X<\/em>). \u00a0Both X, and “not X” are necessary to clearly define the scope and provide notice to others.<\/p>\n

Such a\u00a0scope-clarifying<\/strong>\u00a0response could\u00a0appear on the public patent record, and it would: 1) inform third parties about the reasonable scope of a word such as “spaced relationship”, and 2) Would prevent patentees from arguing, down the road, that a word like “spaced relationship” meant something different than it originally meant. \u00a0Other suggestions appear here<\/a>.<\/p>\n

Conclusion: More Patents Challenged<\/span><\/p>\n

The upshot is that under this new definiteness standard, more patent claims are likely to be challenged for being indefinite (under\u00a0\u00a7\u00a0<\/span>112) than under the earlier Federal Circuit standard. \u00a0The Federal Circuit will have to work out some manageable rules now that their earlier standard has been rejected.<\/p>\n

This could create some significant uncertainty as to the validity of many issued patents employing vague language.<\/p>\n","protected":false},"excerpt":{"rendered":"

Patent Law\u2019s Definiteness Requirement Has New Bite The Supreme Court may have shaken up patent law quite a bit with its recent opinion in the\u00a0Nautilus v. Biosig\u00a0case (June 2, 2014). At issue was patent law’s “definiteness” requirement, which is related to patent boundaries. As I (and\u00a0others) have\u00a0argued, uncertainty about patent boundaries (due to vague, broad […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":[],"categories":[5,4],"tags":[],"_links":{"self":[{"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/posts\/141"}],"collection":[{"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/comments?post=141"}],"version-history":[{"count":10,"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/posts\/141\/revisions"}],"predecessor-version":[{"id":199,"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/posts\/141\/revisions\/199"}],"wp:attachment":[{"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/media?parent=141"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/categories?post=141"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.harrysurden.com\/wordpress\/wp-json\/wp\/v2\/tags?post=141"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}