September 16, 2015
Law360
By Doris Johnson Hines
Authored by Doris Johnson Hines
More than a year has passed since the U.S. Supreme Court’s Nautilus decision, which changed the indefiniteness standard.1 In its remand decision in Nautilus, the Federal Circuit was coy about whether the change in the standard was substantial, stating opaquely that the Supreme Court had "modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’"2 It has been reported that at a "PTO Day" this spring, Judge Raymond T. Chen (the author of a number of post-Nautilus decisions) implied the change was not substantial, stating that too much had been made of a "rhetorical flourish" in the case first identifying the "insolubly ambiguous" standard.3 A few months later, in Dow Chemical, the Federal Circuit was crystal clear: "there can be no serious question that Nautilus changed the law of indefiniteness."4
Whether the change is substantial or not, since Nautilus issued the Federal Circuit has revisited a few of its earlier cases and decided new cases under the new indefiniteness rubric. The court has now had the opportunity to consider indefiniteness challenges in circumstances that routinely arise in patent claims. This article considers the court’s analyses in two areas: terms of degree/subjective terms and terms requiring measuring or testing.
In one of its first post-Nautilus decisions, the Federal Circuit in Interval Licensing addressed the claim term "unobtrusive manner" in the context of the display of data.5 Importantly, while concluding that "unobtrusive manner" was indefinite, the Federal Circuit stated unequivocally that "[w]e do not understand the Supreme Court to have implied in Nautilus, and we do not hold today, that terms of degree are inherently indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention."6
While characterizing "unobtrusive manner" as a term of degree, the court also stated that it was "highly subjective and, on its face, provides little guidance to one of skill in the art."7 That subjectivity proved fatal when combined with intrinsic evidence that did not provide a definition or boundaries for the term. The claim language offered "no objective indication" of the meaning of the term.8 The specification was "at best muddled" and the "hazy relationship" between the claim term and the written description "fail[ed] to provide the clarity that the subjective claim language needs."9 The court declined to "cull out a single ‘e.g.’ phrase from a lengthy specification to serve as the exclusive definition of a facially subjective term."10 The prosecution history fared no better, reflecting "considerable uncertainty about which embodiments were tied to the ‘unobtrusive manner’ language."11 And notably, the patentee relied on a different interpretation of the claim term before the PTO than it argued to the court.12 The court thus concluded that the specification and prosecution history did "not provide a reasonably clear and exclusive definition, leaving the facially subjective claim language without an objective boundary."13
Shortly after Interval, in DDR Holdings,14 the Federal Circuit considered the claim term "look and feel" in the context of webpage layout. The court noted that while the challenger attempted "to characterize ‘look and feel as purely subjective, the evidence demonstrate[d] that ‘look and feel’ had an established, sufficiently objective meaning in the art, and that the [patent] used the term consistent with that meaning."15 Reviewing the patent specification, the court concluded that the methodology for selecting "look and feel" elements and sufficient examples of such elements "are consistent with the established meaning of the term."16 It was also significant that one of the challengers used the term in its advertising and conceded that it and its customers understood its meaning.17 The court thus concluded that "look and feel" was "not a facially subjective term like ‘unobtrusive manner’ in Interval."18
The Federal Circuit’s remand decision in Nautilus is also instructive. Considering the term "spaced relationship" in the context of electrodes in a heart rate monitor, the original decision reversed the district court’s holding of indefiniteness.19 The court found that the intrinsic evidence provided "certain inherent parameters of the claimed apparatus, which to a skilled artisan may be sufficient to understand the metes and bounds of ‘spaced relationship.’"20
On remand, the court noted that "[w]hen a ‘word of degree’ is used, the court must determine whether the patent provides ‘some standard for measuring that degree.’"21 Based on the Supreme Court’s newly articulated standard, the Federal Circuit largely adopted its previous conclusions. Although the "spaced relationship" was not numerically defined in the intrinsic record, the court reaffirmed that there was enough information in surrounding claim language and in the specification to "provide sufficient clarity to skilled artisans as to the bounds of this disputed term."22 The intrinsic evidence showed the range of the "spaced relationship" (between hand-width and infinitesimally small) and how to test for the claimed relationship.
A particularly thorny issue in recent decisions is whether claims are indefinite when they recite a feature or value that must be measured or tested. The question courts have wrestled with is the specificity required for how such measuring or testing is to be performed. What method controls when more than one is known to those of skill in the art?
The Federal Circuit addressed this issue in Teva,23 revisiting its earlier decision following a Supreme Court remand and the court’s Nautilus decision. 24 In its original decision, the Federal Circuit reversed the district court’s holding that the claim term "molecular weight" was not indefinite.25 Applying the Supreme Court’s Teva and Nautilus standards, the Federal Circuit again found that the claim term "molecular weight" was indefinite.
In a split decision, the majority first noted that the term "molecular weight" could refer to three different measures, each calculated in a different way. The claim offered no guidance and the specification contained no express definition.26 While there was no clear error in the district court’s finding, based on expert testimony, that a figure in the patent referred to one of the measures of molecular weight, this did not answer the question.27 The majority turned next to the prosecution history, which proved fatal. The court highlighted inconsistent statements of the patentee on the meaning of "molecular weight" during prosecution of later continuation applications. The district court had credited expert testimony that one of the patentee’s statements was technically incorrect. No matter. According to the majority: "Regardless of the scientific accuracy of the statement, a person of ordinary skill in the art would have understood that the applicants defined the term ‘molecular weight’ as [a different measure] to gain allowance of the claims."28
In dissent, Judge Haldane Robert Mayer stated that the court was "led astray by its failure to afford sufficient deference to the trial court’s findings of fact."29 Judge Mayer reasoned that the majority’s conclusion could not be "reconciled with the district court’s express factual finding that a skilled artisan would not rely on the statement [the patentee] made as to the meaning of ‘molecular weight’ when prosecuting" the later continuation application."30 Teva thus highlights the greater importance the prosecution history can have versus expert testimony in an indefiniteness analysis.
In Ethicon,31 the court addressed the term "average predetermined clamping pressure" in the context of ultrasonic surgical shears used for cutting and sealing blood vessels. The district court found the term indefinite because neither the specification nor any understanding in the art identified a method of measurement or the location of measurement of the clamping pressure.32 The Federal Circuit reversed, holding that the district court improperly ignored intrinsic evidence and misinterpreted expert testimony.
Notably, the court criticized the district court’s reliance on Honeywell Int’l Inc. v. Int’l Trade Comm’n, 341 F.3d 1332 (Fed. Cir. 2003).33 The claims there were directed to a process for manufacturing a type of yarn. The Federal Circuit found the claims indefinite because nothing in the intrinsic evidence provided guidance on which of several sample preparation methods a skilled artisan would have used. In Ethicon, the Federal Circuit concluded that the district court "did not appreciate several key distinctions between the facts here and the facts in Honeywell." The specification in Ethicon informed skilled artisans that the claimed pressures were average pressures and "where these average pressures should be measured."34 This was contrasted with Honeywell, which provided no guidance as to how to measure a critical element recited by the claims."35 In addition, the extrinsic evidence showed that each testing method was "designed to provide similar measurements, whereas the different measurement methods in Honeywell produced widely varying results."36 The court thus concluded that a "skilled artisan, in view of the specification, would understand the scope of the claims with reasonable certainty."37
The court reached the opposite conclusion in Dow Chemical.38 There, the Federal Circuit revisited an earlier indefiniteness analysis under pre-Nautilus law. The court had previously affirmed an initial damages award, specifically finding that the claim term "a slope of strain hardening coefficient greater than or equal to 1.3" was not indefinite.39 The court reconsidered indefiniteness in the context of a supplemental damages award, finding that its earlier decision was "not binding on the issue of indefiniteness because Nautilus changed the applicable law, our prior decision rested on the earlier law, and the patents-in-suit are invalid for indefiniteness under the new Nautilus standard."40
It was undisputed that there were different methods to determine the claimed slope and there was no question that each method could "produce different results."41 Further, the chosen method "could affect whether or not a given product infringes the claims."42 The claims, specification, and prosecution history provided no guidance as to the appropriate method. Applying Teva, and not mentioning Ethicon, the court stated that "the patent and prosecution history must disclose a single known approach or establish that, where multiple known approaches exist, a person having ordinary skill in the art would know which approach to select."43 The court emphasized that "[p]articularly this is so where different approaches to measurement are involved."44
The court thus framed the issue as "whether the existence of multiple methods leading to different results without guidance in the patent or the prosecution history as to which method should be used renders the claims indefinite."45 Before Nautilus, the existence of such multiple methods was acceptable, i.e., the claim was not indefinite, "if someone skilled in the art could arrive at a method and practice that method."46 In fact, in its earlier decision, the court stated that "the mere fact that the slope may be measured in more than one way does not make the claims of the patent invalid."47 "Under Nautilus this is no longer sufficient."48
Considering the "reasonable certainty" standard and what is required of the intrinsic evidence as articulated in Nautilus, the court held that "the required guidance is not provided by the claims, specification, and prosecution history."49 The court analogized the case to Teva, in which expert testimony could not save the claims, and circled back to Interval, noting its holding there that "a claim term is indefinite if it leave[s] the skilled artisan to consult the ‘unpredictable vagaries of any one person’s opinion."50
The court’s decisions in Teva and Dow thus highlight the increased indefiniteness risk to claim terms requiring measuring and testing.
Based on the Federal Circuit’s analyses to date, terms of degree may survive an indefiniteness challenge provided that the record (preferably intrinsic) identifies a standard by which the boundaries of the term may be assessed and provided the term cannot be characterized as wholly subjective. Terms requiring measuring or testing may survive an indefiniteness challenge if a methodology can be identified providing a result falling within the scope of the claim term.51
Endnotes
1 Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014).
2 Biosig Instruments, Inc., v. Nautilus, Inc., 783 F.3d 1374, 1379 (Fed. Cir. 2015).
3 http://www.bna.com/nautilus-standard-used-n17179923883/
4 Dow Chemical Co. v. NOVA Chemicals Corp., No. 2014-1431 (Fed. Cir. Aug. 28, 2015), slip op. at 16.
5 Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed. Cir. 2014).
6 766 F.3d at 1378.
7 Id. at 1371.
8 Id.
9 Id.
10 Id. at 1373.
11 Id. at 1372.
12 Id. at 1372-73.
13 Id. at 1373.
14 DDR Holdings, LLC v. Hotels.com, L.P., 773 F.3d 1245 (Fed. Cir. 2014).
15 Id. at 1260.
16 Id.
17 Id. at 1260-61.
18 Id. at 1261.
19 715 F.3d 899.
20 Id.
21 783 F.3d at 1378 (citations omitted).
22 Id. at 1383, quoting 715 F.3d at 899.
23 Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335 (Fed. Cir. 2015).
24 Teva Pharms. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015).
25 Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363 (Fed. Cir. 2013).
26 789 F.3d at 1341.
27 Id. at 1342.
28 Id. at 1344.
29 Id. at 1346.
30 Id.
31 Ethicon Endo-Surgery, Inc. v. Covidien, Inc., No. 2014-1370 (Fed. Cir. Aug. 7, 2015).
32 Slip op. at 6.
33 Id. at 13-15.
34 Id. at 15.
35 Id.
36 Id.
37 Id.
38 Dow Chemical Co. v. NOVA Chems. Corp., No. 2014-1431 (Fed. Cir. Aug. 28, 2015).
39 Dow Chemical Co. v. NOVA Chems. Corp., 458 F. App’x 910 (Fed. Cir. 2012).
40 No. 2014-1431, slip op. at 7.
41 Id. at 21-22.
42 Id. at 23.
43 Id. at 17.
44 Id.
45 Id. at 23.
46 Id.
47 Id.
48 Id.
49 Id. at 24.
50 Id. at 25.
51 The author’s firm was involved in several of the cases discussed in this article.
Originally printed in Law360 (www.law360.com). Reprinted with permission. This article is for informational purposes, is not intended to constitute legal advice, and may be considered advertising under applicable state laws. This article is only the opinion of the authors and is not attributable to Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, or the firm's clients.
Lecture
Patent Protection for Software-Related Inventions in Europe and the USA Training Course
June 5, 2024
Hybrid
Workshop
Life Sciences Workshop: Updates and Key Trends in Pharmaceutical and Biotechnology IP Law
May 2, 2024
Cambridge
Conference
Best Practices in Intellectual Property– A Decade of Dedication to IP Excellence
April 8-9, 2024
Tel Aviv
INCONTESTABLE® Blog
The Federal Circuit’s Heartfelt Affirmation of Everybody’s Right to Use “Everybody vs. Racism”
March 22, 2024
Federal Circuit IP Blog
March 21, 2024
Due to international data regulations, we’ve updated our privacy policy. Click here to read our privacy policy in full.
We use cookies on this website to provide you with the best user experience. By accepting cookies, you agree to our use of cookies. Please note that if you opt not to accept or if you disable cookies, the “Your Finnegan” feature on this website will be disabled as well. For more information on how we use cookies, please see our Privacy Policy.
Finnegan is thrilled to announce the launch of our new blog, Ad Law Buzz, devoted solely to breaking news, developments, trends, and analysis in advertising law.