The following post comes from Clement S. Roberts (Partner at Durie Tangri and Practice Center Contributor)

Last Thursday, Mark Lemley and I filed an amicus brief urging the Court to take certiorari in Applera v Enzo Biochem for the purpose of reviewing the test for when a claim is indefinite under 35 USC 112, Para. 2.   The brief (which is available here) was signed by an array of innovative companies.

The Patent Act requires claims to be “distinct” and “particular” in terms of calling out the subject matter of the claimed invention.  The purpose of this requirement is – not surprisingly – to put the public on notice of what the claims do and do not cover.   See Hearing Components, Inc v. Shure Inc., 600 F.3d 1357 (Fed. Cir. 2010) (“the purpose of the definiteness requirement is to ensure that ‘the claims, as interpreted in view of the written description, adequately perform their function of notifying the public of the scope of the patentee’s right to exclude.”).

In other words, the Patent Act requires claims to be definite precisely so that people reading the patent know what rights have been claimed by the patent owner and what rights are still available.  Permutit Co. v. Graver Co., 284 U.S. 52, 60 (1931) (“[t]he statute requires the patentee … to inform the public during the life of the patent of the limits of the monopoly asserted, so that it may be known which features may be safely used or manufactured without a license and which may not.” )

At present, Federal Circuit case law does not link the definiteness requirement to its purpose, but instead holds that claims are definite if they can be assigned some reasonable meaning.  Datamize, LLC v. Plumtree Software, Inc, 417 F.3d 1342, 1347 (Fed. Cir. 2005) (“[o]nly claims ‘not amenable to construction’ or ‘insolubly ambiguous’ are indefinite” and claims are held definite if the terms “can be given any reasonable meaning.”)

But there is a big gap between these two ideas –many claims that are highly ambiguous can, despite that ambiguity, be given some reasonable construction.  To put it differently, the question of definiteness is a question about the proper boundaries of a patent claim, while the test the Federal Circuit applies is directed to deciding whether there is some scope that the claim might reasonably be construed to cover.  As a result, the Federal Circuit will find a claim to be valid and definite even where there are many possible meanings (that each result in materially different claim scope) that one might reasonably assign to a given claim.

As the brief makes clear, this is not merely a theoretical problem.  In addition to being an important issue in the actual case on appeal, the Federal Circuit’s rule encourages deliberately ambiguous claim drafting.  After all, so long as there are no real teeth to the definiteness requirement (and thus no penalty for ambiguity) drafting claims so that they can later be flexibly interpreted to read on diverse products or to avoid prior art is enormously helpful to the patent holder.

But, if you buy the argument that the current standard is wrong, then what is the right answer?  That question is mostly outside the scope of the briefing, but it does seem clear that the definiteness requirement ought to be judged in light of its purpose – i.e. that claims must put the public on notice of what they do and do not cover.

Coming up with a precise articulation of how that standard should be implemented is, of course, difficult.  On one hand, the right answer cannot be that claims may have no ambiguity.  On the other, it is hard to come up with language to precisely capture how much ambiguity is consistent with the purpose of putting people on notice of the scope of the claims.  After all, to the extent there is any ambiguity in a claim the claim (by definition) fails to give notice about what it covers vis a vis the ambiguous portion.

But the argument that it is difficult to come up with a standard that gives fantastic results in all cases is not a persuasive argument in support of the existing standard.  It is a bit like the argument that companies made a number of years ago about option pricing – that because no available options-pricing formula gave really accurate answers in all circumstances, companies were justified in treating them as if they had no value for accounting purposes.  But whatever you thought the options were worth, and whatever you thought of the merits of the different available formulas, it was clear that the one value that was absolutely wrong was zero.  Similarly, the Federal Circuit’s test is clear and easy to apply, but works precisely because it assigns virtually all indefiniteness arguments a value of zero.

I think it will be very interesting to see what happens if the Court grants cert and takes this case.  I am sure that there will be a robust discussion and disagreement on what the proper test for indefiniteness ought to be.  But I see that impending discussion as good and helpful in developing a standard that encourages patentees to draft claims of certain scope.

Tags: Applera v. Enzo Biochem, Federal Circuit, Indefiniteness test, Patent Act, Supreme Court

This entry was posted on Monday, November 1st, 2010 at 15:38 and is filed under Federal Circuit Cases, Patent Issues, Patent Litigation, posts, Supreme Court Cases. You can follow any responses to this entry through the RSS 2.0 feed. You can leave a response, or trackback from your own site.