Defining Definiteness: Nautilus and Further Exercise
For more than a decade, the Federal Circuit has construed 35 U.S.C. § 112, ¶ 2 to require that claims be “amenable to construction” and not “insolubly ambiguous.” See Exxon Research & Eng’g Co v. U.S., 265 F.3d 1371, 1375 (Fed. Cir. 2001). In June, however, the Supreme Court declared that these standards are apt to “breed lower court confusion,” and thus a refinement of this standard was warranted. According to the Court, “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2124 (2014). Since the Nautilus decision, the Federal Circuit has had further opportunities to address the definiteness requirement of pre-AIA 35 U.S.C. § 112, ¶ 2 (now 35 U.S.C. § 112(b)). Each decision has important implications for patent practitioners.
In Nautilus, the Supreme Court considered whether claims in a patent for heart-rate monitoring during exercise, which recited a live electrode and a common electrode “mounted . . . in spaced relationship with each other,” satisfied the definiteness requirement of 35 U.S.C. § 112, ¶ 2. 134 S. Ct. at 2126. The district court construed this term to mean that “there is a defined relationship between the live electrode and the common electrode on one side of the cylindrical bar and the same or a different defined relationship between the live electrode and the common electrode on the other side of the cylindrical bar,” but concluded that this construction rendered the claim insolubly ambiguous. Id. at 2127. The district court thus granted summary judgment of invalidity on grounds of indefiniteness. Id.
The Federal Circuit reversed the grant of summary judgment and remanded, finding that a “skilled artisan” would have been able to understand the “metes and bounds” of the claim language at issue. Id. According to the Federal Circuit, the intrinsic evidence, including the claims’ functional provisions, provided guidance to the skilled artisan about the meaning of the recited “spaced relationship.” Id. The Federal Circuit’s decision was based on its prior precedent, which found claims indefinite when they were not “amenable to construction” or were “insolubly ambiguous.” Id. at 2130.
In a unanimous opinion written by Justice Ginsburg, the Supreme Court vacated the Federal Circuit’s judgment and remanded the case with instructions for the Federal Circuit to reassess the definiteness of the claims. Id. at 2131. According to the Court, rather than ask whether claims are “amenable to construction” or “insolubly ambiguous,” courts should inquire whether “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Id. at 2124. The Court stopped short of deciding the definiteness of the claims at issue, however, given that “the Federal Circuit invoked a standard more amorphous than the statutory definiteness requirement allows.” Id. at 2131. Instead, the Court remanded the case to the Federal Circuit with instructions to reconsider the definiteness of the claims under the standard articulated by the Court. Id.
Shortly after the Supreme Court’s Nautilus decision, the Federal Circuit considered the issue of definiteness in two other cases, Augme Techs., Inc. et al. v. Yahoo! Inc., 755 F.3d 1326 (Fed. Cir. 2014) and Triton Tech of Texas, LLC v. Nintendo of Am., Inc., 753 F.3d 1375 (Fed. Cir. 2014). Both of these cases addressed, among other things, the branch of definiteness jurisprudence concerning means-plus-function claims. Means-plus-function claims are governed by pre-AIA 35 U.S.C. § 112, ¶ 6 (and post-AIA 35 U.S.C. § 112(f)), and involve claim recitations where a “means” for performing a function is recited rather than the “structure, material, or acts in support thereof.”
In the Augme Techs.case, one of the patents at issue recited the phrase “means for assembling, at said server system, said second computer readable code module,” which the district court found indefinite because no corresponding algorithm was disclosed in the patent’s specification. On appeal, the Federal Circuit affirmed, relying on its prior decision in Net MoneyIN, Inc. v. VeriSign, Inc., 545 F.3d 1359, 1367 (Fed. Cir. 2008), not Nautilus, for the proposition that “the specification must disclose an algorithm for performing the claimed function.” According to the Federal Circuit, portions of the specification that “merely restate[] the recited function” fail to evidence an algorithm, as required by Net MoneyIN. In other words, a “black box,” without more, will not provide the required algorithm.
In Triton Tech of Texas, each asserted claim of the patent at issue recited an “integrator means.” As in Augme Techs., the district court found that this limitation rendered the claims indefinite because the patent’s specification did not include adequate disclosure of an algorithm. 753 F.3d at 1377-78. The district court concluded that the corresponding structure disclosed in the specification was merely a “conventional microprocessor having a suitably programmed read-only memory,” which fell short of the requisite algorithm. Id. On appeal, the Federal Circuit affirmed, although again not relying on the Supreme Court’s Nautilus decision. According to the Federal Circuit, “because the specification does not disclose an algorithm for performing the claimed integrating function of the ‘integrator means,’” the claims at issue are indefinite. Id. at 1378. While an “algorithm can be expressed in many forms,” merely using the term “numerical integration” in the specification is insufficient. Id. at 1378-79. According to the court, “[d]isclosing the broad class of ‘numerical integration’ does not limit the scope of the claim to the ‘corresponding structure, material, or acts’ that perform the function, as required by section 112.” Id. at 1379.
For practitioners, Nautilus, Augme Techs., and Triton Tech of Texas each provides further guidance for drafting patent claims with an eye toward withstanding definiteness challenges during prosecution, litigation and post-grant validity contests. For one thing, Nautilus confirms that, “in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history.” 134 S. Ct. at 2128. Thus, in addition to ensuring that claim language itself is clear and understandable to a person of ordinary skill in the art, practitioners should verify that the written description and drawings of a specification also provide unambiguous support for claim limitations. Likewise, care should be taken not to inject ambiguity into claims by arguments made during patent prosecution. Further, as Augme Techs. and Triton Tech of Texas illustrate, computer-implemented means-plus-function claim terms require disclosure of an algorithm in the specification—a requirement that remains after Nautilus. As these cases reiterate, the mere disclosure of a generic computer processor or a “black box” that is said to be capable of implementing the recited function in a means-plus-function claim is inadequate. Thus, practitioners should continue to be mindful that, in deciding whether to introduce means-plus-function claim language in computer-implemented recitations, disclosure of a corresponding algorithm is a necessity.