Requirement for a Precise Description of Protected Subject Matter - PowerPoint PPT Presentation

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. 2

35 U.S.C. §112, 2 nd Paragraph PRIVILEGED AND CONFIDENTIAL 3

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. 4

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. 5

Requirement for a Precise Legal Description of the Protected Subject Matter 35 U.S.C. §112(b) – formerly §112, 2 nd 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. 6

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. 7

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” 8

Nautilus, Inc. v. Biosig Instruments, Inc. • 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. 9

Nautilus, Inc. v. Biosig Instruments, Inc. • 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. 10

Nautilus, Inc. v. Biosig Instruments, Inc. • 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

Nautilus, Inc. v. Biosig Instruments, Inc. • 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. 12

Nautilus, Inc. v. Biosig Instruments, Inc. • Nautilus argued that the patent provided no indication of the proper spacing of the electrodes such that the claims were invalid under §112, 2 nd paragraph (despite evidence that some minimum distance between the electrodes must exist) . 13

Nautilus, Inc. v. Biosig Instruments, Inc. 1 heart rate monitor 9 first live electrode 13 second live electrode 11, 15 common electrodes 14

Nautilus, Inc. v. Biosig Instruments, Inc. • The district court agreed, finding that the patent claims were indefinite under 35 U.S.C. §112, 2 nd 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. 15

Nautilus, Inc. v. Biosig Instruments, Inc. • 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.” 16

Nautilus, Inc. v. Biosig Instruments, Inc. • 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.” 17

Nautilus, Inc. v. Biosig Instruments, Inc. • 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. 18

Nautilus, Inc. v. Biosig Instruments, Inc. • 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.” 19

Nautilus, Inc. v. Biosig Instruments, Inc. • 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). 20

Nautilus, Inc. v. Biosig Instruments, Inc. • 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. 21

Nautilus, Inc. v. Biosig Instruments, Inc. • 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.” 22

Nautilus, Inc. v. Biosig Instruments, Inc. • 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. 23

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. 24

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. 25

Indefiniteness Standard - Prosecution • 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 26