Wednesday, May 26, 2010

Judge Plager on "Indefiniteness"

Today, the Federal Circuit denied a petition for en banc rehearing in the case of Enzo Biochem, Inc. v. Applera Corp. (2009-1281).

One of the issues in this case was the use of the term "not interfering substantially" in the claims of patents directed to the detection and labeling of nucleic acids.  The Federal Circuit overturned the district court's finding of indefiniteness, noting that

Because the intrinsic evidence here provides “a general guideline and examples sufficient to enable a person of ordinary skill in the art to determine [the scope of the claims],” . . . the claims are not indefinite even though the construction of the term “not interfering substantially” defines the term without reference to a precise numerical measurement.

While the Federal Circuit appeared to be satisfied with the decision, and the current state of indefiniteness, Judge Plager voiced his displeasure in a sharply-worded dissent:

Despite the varying formulations that this court has used over the years in describing its “indefiniteness” jurisprudence to which the petitioner in this case points, the general conclusion from our law seems to be this: if a person of ordinary skill in the art can come up with a plausible meaning for a disputed claim term in a patent, that term, and therefore the claim, is not indefinite.1 At least not so indefinite as to run afoul of the statutory requirement that claims shall “particularly point[ ] out and distinctly claim[ ] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112, second paragraph.

The corollary derived from this understanding is that if several persons of ordinary skill come up with competing but plausible interpretations of a disputed term—as is typically the case with competing “expert witnesses” in patent infringement litigation—the problem is not one of an inherently ambiguous and potentially indefinite claim term, but rather the problem becomes simply one of picking the “right” interpretation for that term. Since picking the “right” interpretation—claim construction—is a matter of law over which this court rules, and since the view of the trial judge hearing the case is given little weight, so that the trial judge’s view on appeal becomes just a part of the cacophony before this court, it is not until three court of appeals judges randomly selected for that purpose pick the “right” interpretation that the public, not to mention the patentee and its competitors, know what the patent actually claims. The inefficiencies of this system, and its potential inequities, are well known in the trade.

The United States Patent and Trademark Office (“PTO”), by contrast, appears to be taking steps to give the statutory requirement real meaning. In 2008, the patent examining corps was given a five-page instruction on “Indefiniteness rejections under 35 U.S.C. 112, second paragraph.” [link] . . . This memo was followed later in the year by a rare precedential opinion issued by the Board of Patent Appeals and Interferences (“Board”) in Ex parte Miyazaki.

* * *

The Board is clearly right in recognizing that the circumstances are different between pre-issuance and post-issuance application of the definiteness standard with regard to claim terms. At the same time, the PTO and the Board are clearly right in insisting that, if the public notice function of the patent law is to be honored, claim terms must particularly point out and distinctly claim the subject matter of the invention. In my view, this court’s definiteness doctrine could go considerably further in promoting that objective than it currently does, with the not inconsequential benefit of shifting the focus from litigation over claim construction to clarity in claim drafting.

To begin the discussion of how this court could move in that direction, I would grant the petition for panel rehearing. The court now spends a substantial amount of judicial resources trying to make sense of unclear, over-broad, and sometimes incoherent claim terms. It is time for us to move beyond sticking our fingers in the never-ending leaks in the dike that supposedly defines and figuratively surrounds a claimed invention. Instead, we might spend some time figuring out how to support the PTO in requiring that the walls surrounding the claimed invention be made of something other than quicksand.

Read/download the opinion here (link)

4 Comentários:

John Roethel said...

"... what the applicant regards as his invention."

Not his lawyer, not his expert; the applicant.

MaxDrei said...

Have not yet read the opinion or the dissent but when I do I shall be looking for parallels with Europe, where the Office strictly examines the clarity of the claim (Art 84, EPC) but lack of clarity of a claim is unavailable as a validity attack after issue.

I think that makes sense. Has there ever yet been a claim that issued that is so clear that it is unassailable under Art 84 EPC? Do we really want to rehearse clarity all the way to the Court of Appeal, every single time any issued patent assumes any degree of commercial importance? Apart from refreshing the profits of firms of patent litigators, what benefit does that bring to the litigating parties, in return for the appalling cost involved ?

Anonymous said...

Doesn't the Office bear some burden for supplying the sands of "broadest" interpretation?

Shouldn't the Office rather apply a narrowest interpretation, put that interpretation on the record and then leave it up to the applicant to say, on the record, just how much more than the narrow interpretation the applicant thinks he has a right to?

EG said...

Peter,

I frankly agree with Plager's dissent. The "definiteness" requirement of paragraph 2 of 35 USC 112 should be enforced more strictly than Federal Circuit precedent might suggest. There's nothing inherently wrong with the term "substantially." But terms like "substantially" which are relative should be defined carefully in the patent specification (as should other key claim terms) so that the meaning of the term is clear to at least the PHOSITA, especially in the context of the claimed invention.

I also wouldn't mind a more stringent "enablement"/"written description" requirement under paragraph 1. As I've expressed before, 35 USC 112 should be the initial screen for poorly defined inventions (including the claimed method in Bilski), not 35 USC 101.

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