Are Patents More Vulnerable to Indefiniteness Challenges?
This article was first published in the December 1, 2016 edition of the Legal Intelligencer
Over a year ago, the U.S. Supreme Court handed down Nautilus v. Biosig Instruments, 134 S. Ct. 2120 (2014), replacing the Federal Circuit’s “insolubly ambiguous” standard with a “reasonable certainty” standard for analyzing whether patent claims are “definite.” Since then, several district court and U.S. Court of Appeals for the Federal Circuit decisions have confirmed that the standard has definitively changed. These decisions illustrate several new hurdles for patent owners and, in some cases, find claims invalid under Nautilus that were earlier found valid under the Federal Circuit’s “insolubly ambiguous” standard. The heightened definiteness scrutiny resulting from Nautilus may be particularly effective against patent trolls—entities that have traditionally relied on claims of ambiguous scope to leverage early settlements.
A patent must “conclude with one or more claims particularly pointing out and distinctly claiming” the invention, according to 35 U.S.C. Section 112. Each claim in a patent that fails to meet this requirement may be found invalid for indefiniteness. Prior to Nautilus, the Federal Circuit applied a fairly lenient standard for meeting the requirement, invalidating claims for indefiniteness only where they were “insolubly ambiguous” or “not amenable to construction.”
In Nautilus, the Supreme Court rejected the Federal Circuit’s test for determining compliance with Section 112. Briefly, the court’s motivation in adopting a new test was avoiding the danger of “‘a zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.'” To resolve this danger, the court concluded that the definiteness requirement will be met where “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.”
Without qualitatively comparing the new reasonable certainty standard to the now-rejected “insolubly ambiguous” standard, the Federal Circuit, on remand in Biosig Instruments v. Nautilus, 783 F.3d 1374, 1379 (Fed. Cir. 2015), characterized the new standard as a “modified standard by which lower courts examine allegedly ambiguous claims” and that “we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.'” The court also noted that, following Nautilus, “judges have had no problem operating under the reasonable certainty standard.”
In Dow Chemical v. Nova Chemicals, Nos. 2014-1431, 2014-1462 (Fed. Cir. Aug. 28, 2015), the Federal Circuit applied the new test from Nautilus to overturn its own previous ruling finding the claims reciting “a slope of strain hardening coefficient greater than or equal to 1.3” definite under the “insolubly ambiguous” test. During the second appeal of this case, Nautilus was decided, and the Federal Circuit again considered the definiteness question. The Federal Circuit noted in its analysis that at least four methods existed to measure the claimed slope, each of which was capable of yielding a different result. The Federal Circuit found particularly notable that “neither the patent claims nor the specification … discusses the four methods or provides any guidance as to which method should be used or even whether the possible universe of methods is limited to these four methods.” Acknowledging the more stringent test compelled a different result, the Federal Circuit stated that its “original decision would have been different under the new Nautilus standard.” The Federal Circuit found that the “existence of multiple methods leading to different results” and the absence of any guidance regarding which method to use rendered the claim term at issue indefinite.
Similarly, in Interval Licensing LLC v. AOL, 766 F.3d 1364 (Fed. Cir. 2014), the Federal Circuit affirmed the district court’s conclusion that the claim phrase “unobtrusive manner” was an indefinite term of degree. The Federal Circuit emphasized that Nautilus did not automatically invalidate terms of degree, and that such terms can be found definite provided enough certainty to one of skill in the art is proffered. In other words, a patent must provide “some standard” for measuring the term of degree to establish the “objective boundaries” of the claim scope. However, a term of degree will be found indefinite where it is left to the opinion or subjective interpretation of any individual. Based on this reasoning, the court found that “unobtrusive manner” was a “facially subjective” term that provided no clear boundary for interpretation. The Federal Circuit further rejected the argument that the specification, through various examples, provided objective meaning to this term. Instead, the Federal Circuit found that the variety of disclosed examples and the uncertainty regarding which examples related to the “unobtrusive manner” limitation “at best muddled” any meaning provided by the specification.
By contrast, in DDR Holdings LLC v. Hotels.com, 773 F.3d 1245, at 1260-61 (Fed. Cir. 2014), the Federal Circuit considered the phrases “look and feel” and “visually perceptible elements” (vis-à-vis a Web page) to have an established, sufficiently objective meaning in the art, and that the patent at issue used those terms consistently with that meaning. In particular, the court found that these claim terms were not “facially subjective” like other claim terms considered by the court before and after Nautilus was decided. Accordingly, the challenged phrases were found definite.
District court cases following Nautilus have also confirmed that claims that may have survived—or did survive—under the old definiteness regime are subject to challenge and invalidation under the Supreme Court’s new test.
In Abdou v. Alphatec Spine (S.D. Cal. Nov. 19, 2014), the court expressly acknowledged the increased strictness of the standard. In evaluating claim terms referencing proximity, distance and location (i.e., “defined anatomical position,” “defined anatomical relationship,” and “defined spatial relationship”), the court determined that the “new and more rigorous standard imposed by the Supreme Court” rendered the claims reciting the terms indefinite in the absence of “identified boundaries.” The court emphasized that the new test demanded more than the ability to “‘ascribe some meaning to [the] patent’s claims.'”
In Broussard v. Go-Devil Manufacturing Co. of Louisiana, 29 F.Supp.3d 753, 803 (M.D. La. 2014), the court stated that “this new standard is stricter than that previously employed by the Federal Circuit.” In applying the new standard, the court addressed the construction of claim terms “elongated drive housing” and “drive shaft.” Analyzing the specifications and prosecution histories, the court found the patents lacked a maximum length limitation for the claim elements at issue. Such a deficiency “expand[ed] the reach of Mr. [Kyle] Broussard’s patents well beyond the scope of his invention.” As a result, the court rendered the claims at issue indefinite.
In sum, as the cases described above show, even claim terms that are not insolubly ambiguous (i.e., susceptible to some construction) may be vulnerable post-Nautilus. Claim terms of degree and relationship may be particularly prone to invalidation where the specification fails to provide a definition or additional objective guidance. There is a risk, however, against providing too many (or too disparate) examples in the specification, which may instead “muddle” the meaning of a claim term.
This increased rigor in assessing definiteness is likely a welcome change to those defending against infringement accusations by patent trolls. Patent trolls are notorious for wielding claims of arguably uncertain scope designed to leverage early settlements from companies not willing to risk litigation to determine that scope. As explained by the Supreme Court, “absent a meaningful definiteness check, we are told, patent applicants face powerful incentives to inject ambiguity into their claims.” Because courts, post-Nautilus, are applying that check, we may see a shift away from the practice of leveraging ambiguity to seek settlements.