U.S. Supreme Court Requires Definiteness in Patent Claims
This post updates and supersedes my earlier post where the Federal Circuit ruled that it is allowable to have a certain amount of ambiguity in patent claims. The standard articulated was that a claim was indefinite “only when it is not amenable to construction . . . [or] insolubly ambiguous.” Slip Op. at *7. SPOILER ALERT: the Supreme Court of the United States (SCOTUS) corrects the Federal Circuit by vacating the decision and remands the case with new instructions to comply with the “reasonable certainty” standard. Slip Op. at *11. After some context, I present some highlights of the SCOTUS decision.
On 4 June 2014, SCOTUS decided, Nautilus, Inc. v. Biosig Instruments, Inc. (PDF). The Nautlius litigation involves U.S. Patent No. 5,337,753 protecting a heart rate monitoring device. The device operates by measuring electrocardiograph (“ECG”) signals related to a user’s heartbeat. The inventors observed that electromyogram (“EMG”) signals can cause inaccuracies in measuring ECG signals. EMG signals are generated by skeletal muscles and can interfere with detection at an exercise monitor grip. The patent claim called for a heart rate monitor having an “elongate member” (such as a cylindrical bar) and “a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other [electrodes],” (emphasis added). See my earlier post for a complete copy of the claim in dispute.
At trial, the dispute centered on the term “spaced relationship”—how far apart the electrodes must be before they would be deemed to be in a “spaced relationship.” In the Markman hearing, the district court ruled that “there is a defined relationship between the live electrode and the common electrode on one side of the cylindrical bar and the same or a different defined relationship between the live electrode and the common electrode on the other side of the cylindrical bar.” Nautilus then moved for summary judgment, arguing that the term “spaced relationship” was indefinite. The district or trial court agreed and granted the motion reasoning that the claim language “did not tell . . . anyone what precisely the space should be.”
Before reaching the SCOTUS, the Federal Circuit reasoned that the disputed claim term “spaced relationship” did not suffer from indefiniteness and reversed the trial court’s interpretation. Because the term was amenable to construction, “indefiniteness . . . would require a showing that a person of ordinary skill would find ‘spaced relationship’ to be insolubly ambiguous—that it fails to provide sufficient clarity delineating the bounds of the claim to one skilled in the art,” and held that “a skilled artisan would find such boundaries provided in the intrinsic evidence,” that is, from an reading and understanding of the patent.
Note, the “insolubly ambiguous” standard is no longer the law because Nautilus appealed to the SCOTUS, which unanimously reverses the Federal Circuit’s decision.
In place of the “insolubly ambiguous” standard, SCOTUS states 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.” Slip. Op. at *1. In supporting this conclusion, SCOTUS provides some guidance when it states, “[i]t cannot be sufficient that a court can ascribe some meaning to a patent’s claim” and the “definitiveness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post-hoc.” SCOTUS further states, “[t]o tolerate imprecision that is just short of . . . ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’” Slip. Op. at *12. The SCOTUS further states, the “Federal Circuit invoked a standard more amorphous than the statutory definiteness requirement [of 35 U.S.C. 112(2)] allows.” Slip Op. at *14.
That language seems pretty serious. The SCOTUS was concerned with “lower court confusion.” Slip Op. at *11. The function of the claims is to give certainty to what is protected and what is not protected by a patent. The SCOTUS reminded the Federal Circuit that “the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Slip Op. at *12. Further, the SCOTUS reminds us that, “patents are not addressed to lawyers, or even to the public generally, but rather to those skilled in the relevant art.” Slip Op. at *9 (internal quotes omitted).
I do not look forward to the opinion from the Federal Circuit on remand. Given its history, I suspect we will see a very short discussion of the new standard in the second opinion from the Federal Circuit in this case. Also, the SCOTUS “leaves for another day,” two issues: (1) whether the ultimate issue of definiteness triggers the clear-and-convincing-evidence standard, and (2) whether deference is due to the USPTO’s resolution of disputed issues of fact. See. footnote 5, Slip Op. at *13.
There are several lessons from this opinion. Inventors need to clearly articulate and record what is their invention. Inventors need to communicate the necessary details to whomever drafts the patent application. Further, patent attorneys need to take the time and effort to clearly draft patent applications so that there is no ambiguity. Patent attorneys need to carefully draft claims and not make fuzzy claims to try to ensnare all possible future infringements.
Another lesson from this SCOTUS opinion is that patent applications should be written with future possible litigation in mind. I imagine that the U.S. patent judges in post-issuance proceedings will be aware of this decision and will not hesitate to strike claims that are indefinite.