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

• f 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
• ne 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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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.

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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

• pposite that of the right hand, whereas EMG

signals for each hand have the same polarity.

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Nautilus, Inc. v. Biosig Instruments, Inc.

• The invention included a cylindrical bar, a pair
• f 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

• ther.

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.

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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, 2nd paragraph (despite evidence that some minimum distance between the electrodes must exist) .

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Nautilus, Inc. v. Biosig Instruments, Inc.

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1 heart rate monitor 9 first live electrode 13 second live electrode 11, 15 common electrodes

Nautilus, Inc. v. Biosig Instruments, Inc.

• 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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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.”

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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.”

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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.

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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.”

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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).

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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.

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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.”

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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.

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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,
• nce issued, will be interpreted more broadly

than is justified.

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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

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Indefiniteness Standard - Prosecution

• 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 35 U.S.C. §112, 2nd Paragraph

• 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 35 U.S.C. §112, 2nd Paragraph

• 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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