how definite must your issued patent claim language be - are your claim terms too broad and invalid?...

of 3

© Michael A. Shimokaji, 2014

The contents of this article represent the opinions of the author and not those of the

author’s law firm or clients.

HOW DEFINITE MUST YOUR ISSUED PATENT CLAIM

LANGUAGE BE –

ARE YOUR CLAIM TERMS TOO BROAD AND INVALID?

35 U.S.C. Section 112(b) requires that claims “particularly [point] out

and distinctly [claim]” the invention. Against that backdrop, patent applicants

want broad claim terms, whereas patent examiners want narrower claim

terms.

The Federal Circuit, in In re Packard (May 2014), previously addressed

the question of patent claim indefiniteness - in the context of pre-issuance,

i.e., while the patent application is being prosecuted. The Federal Circuit

explained that pre and post issuance require different standards of review.

The US Supreme Court, in Nautilus v. Biosig (June 2014), has now

explained the standard of review for claim indefiniteness – in a post-issuance

circumstance, i.e., after the patent issues.

Bioseg filed suit for patent infringement. The Biosig patent related to

a heart monitor for an exercise machine – like a treadmill. The monitor is

contained in a cylinder that a user grips with both hands. Thereby, each hand

contacts two electrodes that are in “spaced relationship with each other.”

Michael Shimokaji

www.shimokaji.com

949-788-9968

http://www.shimokaji.com/

of 3




Bioseg argued that “spaced relationship” meant the distance between

the electrodes. Nautilus argued that it was a distance greater that the width of

each electrode.

The district court found that it meant a “defined relationship between

the [two electrodes] on one side of the cylindrical bar and the same or different

defined relationship between the [two electrodes] on the other side of the

cylindrical bar." That, according to the district court, did not inform ‘“anyone

what precisely the spacing should be,’ or supply ‘any parameters’ for

determining the appropriate spacing.”

The Federal Circuit found the claim definite because a claim is

indefinite “only when it is ‘not amendable to construction’ or ‘insolubly

ambiguous.’” That test takes into consideration intrinsic evidence and

“certain inherent parameters of the claimed apparatus, which to a skilled

artisan may be sufficient to understand the metes and bounds of ‘spaced

relationship.’”

The Supreme Court began by explaining that the “definiteness

requirement must take into account the inherent limitations of language” and

that “[s]ome modicum of uncertainty . . . is the ‘price of ensuring the

appropriate incentives for innovation.’” Yet, “a patent must be precise enough

to afford clear notice of what is claimed, thereby ‘apprising the public of what

is still open to them.’”

According to the Supreme Court, Section 112 requires more than a

district court being able to “ascribe some meaning” to the claim term. Further,

Section 112 does not “tolerate imprecision just short of that rendering a claim

‘insolubly ambiguous’”.

of 3




Therefore, the definiteness requirement under Section 112 is met when

the “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.”

PRACTICE POINTER:

It is not clear if the US Supreme Court has brought more clarity to the

requirement of indefiniteness. What is “reasonable certainty” will likely be

the focus of much argument.

In the meantime, patent prosecution practitioners might consider using

the USPTO’s Glossary pilot program whereby applications include a glossary

of definitions.

how definite must your issued patent claim language be - are your claim terms too broad and invalid?...

Law