Requirement for a Precise Description of Protected Subject ...€¦ · Requirement for a Precise Legal Description of the Protected Subject Matter • In the form of claims which

Requirement for a Precise

Description of Protected Subject

Matter

Presented by:

Abraham Rosner

Statutory Requirement for Validity of the Claims

of a U.S. Patent

• For a patent to be valid in the United States,

the claimed subject matter must be novel and

unobvious in view of the requirements of 35

U.S.C. §102 and 35 U.S.C. §103. Moreover, the

specification disclosure and the claims of the

issued patent must meet the legal

requirements set forth in 35 U.S.C. §101 and

35 U.S.C. §112, first and second paragraphs.

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PRIVILEGED AND CONFIDENTIAL 3

35 U.S.C. §112, 2nd

Paragraph

Requirement for a Precise Legal Description of

the Protected Subject Matter

• In the form of claims which define the scope or the "metes and bounds" of the patented invention.

• Define the exclusive property right given to the patentee by the government upon issuance of a patent.

• This is the right to exclude others from making, selling, using or offering for sale within the United States, or importing into the United States, the claimed invention for a period of 20 years from the filing date of the patent.

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Requirement for a Precise Legal Description of the

Protected Subject Matter

• In return for this exclusive right, the patentee

places the invention in the public knowledge

by providing a specification which teaches

how to make and use the invention and which

sets forth the best mode for practicing the

invention.

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Requirement for a Precise Legal Description of

the Protected Subject Matter

35 U.S.C. §112(b) – formerly §112, 2nd paragraph

The specification shall conclude with one or

more claims particularly pointing out and

distinctly claiming the subject matter which the

applicant regards as his invention.

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Insolubly Ambiguous

Previous Federal Circuit Standard

• Until recently, the Federal Circuit has long held that patents can only be found indefinite if they are “insolubly ambiguous.”

• By “insolubly ambiguous,” the Federal Circuit meant “not amenable to construction,” which rule made it difficult to invalidate vague patents. This is because only a patent that no one could possibly understand would be indefinite.

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Nautilus, Inc. v. Biosig Instruments, Inc.

572 U.S. (2014)

• In Nautilus, the Supreme Court addressed what

some practitioners considered to be an unclear

standard for determining “definiteness” under 35

U.S.C. §112, second paragraph

• The Supreme Court reversed the Federal Circuit’s

previous “insolubly ambiguous” test and held

that a claim is indefinite if its claims “fail to

inform, with reasonable certainty, those skilled in

the art about the scope of the invention”

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• Biosig sued Nautilus for infringement of U.S.

Patent 5,337,753 directed to a heart-rate

monitor on exercise equipment .

• Subsequent to reexamination in which the

PTO confirmed patentability of the ‘753 patent

claims, Biosig restarted its infringement

proceedings.

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• The purpose of the invention was to better detect

electrical signals from the heart (ECG signals) by

distinguishing them from electrical signals

generated by other muscles (EMG signals).

• The invention was based on the finding that ECG

signals detected from a user’s left had a polarity

opposite that of the right hand, whereas EMG

signals for each hand have the same polarity.

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• The invention included a cylindrical bar, a pair

of electrodes on each side of the cylindrical

bar, and a difference amplifier (to cancel out

the identical EMG signals, thus filtering out

the EMG interference).

• The claims require “live” and “common”

electrodes in spaced relationship with each

other.

PRIVILEGED AND CONFIDENTIAL 11


• During claim construction, the district court

focused on the claim language regarding

electrodes “mounted … in spaced relationship

with each other.”

• No definition of “spaced relationship” is found

in the specification.

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• Nautilus argued that the patent provided no indication of

the proper spacing of the electrodes such that the claims

were invalid under §112, 2nd paragraph (despite evidence

that some minimum distance between the electrodes

must exist) .

13


14

1 heart rate monitor

9 first live electrode

13 second live electrode

11, 15 common electrodes


• The district court agreed, finding that the

patent claims were indefinite under 35 U.S.C.

§112, 2nd paragraph, and granted summary

judgment to Nautilus.

• Particularly, the district court held that the

patent was not sufficiently definite because

the claim language did not tell one of ordinary

skill in the art how to space the electrodes.

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• The Federal Circuit reversed and remanded to

the district court.

• The Federal Circuit applied its then-existing

standard which held that a claim may be

indefinite “only when it is not amenable to

construction or insolubly ambiguous.”

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• Under the “insolubly ambiguous” standard,

the Federal Circuit found the term “spaced

relationship” to be definite because the claim

language, the specification and the

prosecution history provided a person skilled

in the art with sufficient information to

understand the limitation of “spaced

relationship.”

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• Specifically, the Federal Circuit found that the

distance would necessarily be greater than

zero, but less than the size of a person’s hand,

since a single hand needed to touch both

electrodes.

• The Supreme Court granted certiorari, and

subsequently reversed and remanded the

Federal Circuit’s holding of definiteness.

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• The Supreme Court sought to reconcile:

– that patents are addressed to those skilled in the

relevant art, and that the definiteness requirement

must take into account the inherent limitations of

language (some uncertainty is the price of ensuring

appropriate incentives for innovation);

– while at the same time 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.”

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• The Court struck down the “insolubly ambiguous”

standard as diminishing the definiteness

requirement’s public-notice function and leading

to uncertainty of others entering the field only at

the risk of infringement.

• Absent a meaningful check, patent applicants

have a strong incentive to inject ambiguity into

their claims (which the Court considered to be

undesirable).

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• To reconcile the above competing needs, the

Supreme Court adopted standard that 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.”

• The Supreme Court remanded the case for

proceedings consistent with its opinion.

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• The Supreme Court’s decision may make it

easier for defendants to show that a patent is

invalid for indefiniteness by rejecting the

Federal Circuit’s former standard that claims

are only indefinite when they are “insolubly

ambiguous” or not “amenable to

construction.”

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• Defendants challenging a patent as indefinite should present expert testimony as to the understanding of “those skilled in the art” –namely, why those skilled in the art cannot determine what infringes and what does not infringe.

• Patent owners will argue that the scope of the term at issue would be understood by those skilled in the art.

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Indefiniteness Standard - Prosecution

• While the definiteness requirement of 35

U.S.C. §112, second paragraph, applies to

patent claims during both prosecution and

litigation, the Nautilus holding only impacts

the definiteness requirement during litigation.

• Claims under examination are evaluated

under a different standard than patented

claims.

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Broadest Reasonable Interpretation

• Because Applicant has the opportunity to

amend claims during prosecution, the PTO

gives a patent claim its “broadest reasonable

interpretation consistent with the

specification.” MPEP §2111.

• This will reduce the possibility that the claim,

once issued, will be interpreted more broadly

than is justified.

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• In patent examining parlance, the claim

language must be “definite” to comply with 35

U.S.C. §112(b).

• Conversely, a claim that does not comply with

the requirement of 35 U.S.C. §112(b) is

indefinite. MPEP §2173

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• The primary purpose of giving a patent claim its “broadest reasonable interpretation” is to ensure that the scope of the claims is clear so that the public is informed of the boundaries of what constitutes infringement of the patent.

• A second purpose is to provide a clear measure of what applicant regards as the invention so that a determination can be made as to whether the invention meets the criteria for patentability (novelty and unobviousness) and whether the specification meets the criteria of 35 U.S.C. §112(a) – enablement (how to make and use the invention).

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Broadest Reasonable Interpretation

• Under the broadest reasonable interpretation standard, the words of the claim must be given their plain meaning (ordinary and customary meaning), unless the specification gives that term a special meaning or is inconsistent with the specification.

• If the metes and bound of the claim are not clear (i.e., what would infringe the claim and what would not), then the claim is indefinite and should be rejected.

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SUMMARY

35 U.S.C. §112, 2nd Paragraph

• The Patent Statute Requires a Precise Legal Description of the Protected Subject Matter

• Until recently, the law was such that patents could only be found indefinite if they were “insolubly ambiguous” meaning “not amendable to construction.”

• In the Biosig decision, the Supreme Court struck down the Federal Circuit standard, holding that a claim is indefinite if its claims “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

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SUMMARY


• The Supreme Court’s decision may make it easier for defendants to show that a patent is invalid for indefiniteness.

• Under the new standard, defendants challenging a patent as indefinite should present expert testimony as to the understanding of “those skilled in the art.”

• Patent owners will argue that the scope of the term at issue (i.e., what infringes and what does not infringe) would be understood by those skilled in the art.

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SUMMARY


• Claims under examination are evaluated

under a different standard than patented

claims.

• Because Applicant has the opportunity to

amend claims during prosecution, the PTO

gives a patent claim its “broadest reasonable

interpretation consistent with the

specification.”

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Thank you

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Requirement for a Precise Description of Protected Subject ...€¦ · Requirement for a Precise Legal Description of the Protected Subject Matter • In the form of claims which