NAUTILUS: A NEW STANDARD FOR DEFINITE CLAIMING* Harold C.

Wegner**

I. OVERVIEW II. PUBLIC POLICY: TWO SIDES OF THE COIN III. AVOIDABLY (VS. INSOLUBLY) AMBIGUOUS CLAIMING IV. CONCLUSION

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APPENDIX: THE LORD LOREBORN TEST FOR 112(B) INDEFINITENESS: AN ALTERNATIVE TO INSOLUBLY AMBIGUOUS

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* This paper is a background paper for the Second Annual Naples Midwinter Patent Experts Conference, Naples, Florida, February 10-11, 2014, at the Naples Hilton. The paper considers the standard for claim definiteness that is under review by the Supreme Court which on February 10, 2014, granted certiorari in Nautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369. The appendix had been a separate paper, published prior to the grant of certiorari. This paper represents the personal views of the author and does not necessarily reflect the views of any colleague, organization or client thereof. This paper: January 12, 2014. This paper was written without prior consultation with Philip Warrick, one of the participants at the Naples Conference (who is involved in the Nautilus case) or the Hon. Roger Hughes (author of a decision cited in this paper). ** Foley & Lardner LLP, Washington, D.C. Biographical information is found on the last page of the Appendix.

Wegner, Nautilus: A New Standard for Definite Claiming

I. OVERVIEW In Nautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369, opinion below, Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 900 (Fed. Cir. 2013)(Wallach, J.), petitioner reawakens the ghost of United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942), the last major Supreme Court case where claims were invalidated for indefiniteness under what today is 35 USC 112(b). Under the Federal Circuit case law even a claim deliberately drafted with ambiguities to cloud the true scope of protection is saved from invalidity unless the claim is insolubly ambiguous. Petitioner asks the Supreme Court in the first Question Presented: Does the Federal Circuits acceptance of ambiguous patent claims with multiple reasonable interpretations so long as the ambiguity is not insoluble by a court defeat the statutory requirement of particular and distinct patent claiming? It is likely that the Supreme Court will reverse the Federal Circuit in Nautilus. Thats the easy part. Then, the harder points. What standard if any should be set for determining claim particularity? What test will the Federal Circuit create for claim particularity within the ambit of whatever guidance is given by the Supreme Court? The starting point is a recognition that there are two competing elements. First, the system must permit a certain claiming latitude to inventors, given the difficulties of language to precisely define the scope of technological innovation. Second, of course, there is the need for clear boundaries of protection to foster competition and encourage future innovation. See III, Public Policy: Two Sides of the Coin.
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Wegner, Nautilus: A New Standard for Definite Claiming

The Federal Circuit has developed a unique test for determining whether the patentee has provided claims with sufficient particularity: If there is an ambiguity in the claim the threshold of invalidity is reached only if the claim is insolubly ambiguous. To the contrary, under Commonwealth case law dating back nearly one full century and as manifested in Canadian opinions, there is a much lower threshold: Claims are invalidated where they are avoidably ambiguous. See III, Avoidably (versus Insolubly) Ambiguous Claiming

II. PUBLIC POLICY: TWO SIDES OF THE COIN There are manifestly two sides to the coin, both important. On the one hand, it remains important for the judicial system to encourage innovation by providing relatively certain patent protection for the inventor free as much as possible from arcane rules and procedural obstacles to sustain such patent rights. The

Court in Exxon Research justifies its obviously pro-patentee bias by the statement that [b]y finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity, see N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1579 (Fed. Cir. 1993), and we protect the inventive contribution of patentees, even when the drafting of their patents has been less than ideal. Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)(emphasis added). The other side of the coin is seen from nineteenth century case law that focuses on the need for clear claim boundaries to foster further innovation.

Wegner, Nautilus: A New Standard for Definite Claiming

The current standard for patent claims under what is now 35 USC 112(b) can be traced to the second half of the nineteenth century. Then, the United States developed a mandatory system of patent claims to define the metes and bounds of protection. The policy considerations and the need to point out clear boundaries of protection through such claims was pointed out in Merrill v. Yeomans, a contemporaneous opinion of the Supreme Court that explains this evolution of the law: The growth of the patent system in the last quarter of a century in this country has reached a stage in its progress where the variety and magnitude of the interests involved require accuracy, precision, and care in the preparation of all the papers on which the patent is founded. It is no longer a scarcely recognized principle, struggling for a foothold, but it is an organized system, with well-settled rules, supporting itself at once by its utility, and by the wealth which it creates and commands. The developed and improved condition of the patent law, and of the principles which govern the exclusive rights conferred by it, leave no excuse for ambiguous language or vague descriptions. The public should not be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights. The genius of the inventor, constantly making improvements in existing patents, a process which gives to the patent system its greatest value, should not be restrained by vague and indefinite descriptions of claims in existing patents from the salutary and necessary right of improving on that which has already been invented. It seems to us that nothing can be more just and fair, both to the patentee and to the public, than that the former should understand, and correctly describe, just what he has invented, and for what he claims a patent. Merrill v. Yeomans, 94 (4 Otto) U.S. 568, 573-74 (1877).

Wegner, Nautilus: A New Standard for Definite Claiming

III. AVOIDABLY (VERSUS INSOLUBLY) AMBIGUOUS CLAIMING The two sides to the public policy debate are also recognized in the Commonwealth countries. The Commonwealth countries have recognized both the need for clear claim boundaries to foster competition and future research while also honoring the rights of the inventor to gain reasonable protection where it is difficult or impossible to draft claims with the most precise boundaries. Whereas the Federal Circuit will invalidate a claim for violation of the definiteness requirement of 35 USC 112(b) only if the claim is insolubly ambiguous, the Commonwealth will invalidate a claim under a lower bar where the claim is avoidably ambiguous. Pfizer Canada Inc. v. Canada (Minister of Health), [2005] F.C.J. No. 2155 (Federal Court of Canada 2005)(Hughes, J.)(quoting Natural Colour Kinematograph Company Limited v Bioschemes Limited (1915) 32 RPC 256, 266 (1915)(Loreborn, J.)). The avoidably ambiguous test has three elements as explained by Judge Hughes in the cited Pfizer Canada case: [1] [L]anguage whichis avoidably obscure or ambiguous [invalidates the claim] whether the defect be due to design, or to carelessness or to want of skill. [2] Where the invention is difficult to explain, due allowance will, of course, be made, for any resulting difficulty in the language. [3] But nothing can excuse the use of ambiguous language when simple language can easily be employed, and the only safe way is for the patentee to do his best to be clear and intelligible." (emphasis added; rephrased as shown in brackets and reformatted with paragraph numbers added).
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Wegner, Nautilus: A New Standard for Definite Claiming

The Canadian (Commonwealth) approach is explained in greater detail in the Appendix, an earlier paper entitled The Lord Loreborn Test For 112(b) Indefiniteness: An Alternative to Insolubly Ambiguous

IV. CONCLUSION

To the extent that the Court overturns the insolubly ambiguous test of the Federal Circuit, it is important that a balanced test is created that protects the inventor from the difficulties of claim language. Consideration should be given to the approach taken by Judge Hughes in Canada that invalidates a claim for the lower bar of being avoidably ambiguous.

THE LORD LOREBORN TEST FOR 112(b) INDEFINITENESS: AN ALTERNATIVE TO INSOLUBLY AMBIGUOUS*
Harold C. Wegner

[1] [L]anguage whichis avoidably obscure or ambiguous [invalidates the claim] whether the defect be due to design, or to carelessness or to want of skill. [2] Where the invention is difficult to explain, due allowance will, of course, be made, for any resulting difficulty in the language. [3] But nothing can excuse the use of ambiguous language when simple language can easily be employed, and the only safe way is for the patentee to do his best to be clear and intelligible." Lord Loreborn (1915)**

I. OVERVIEW II. CLASHING ANALYTICAL METRICS FOR CLAIM ANALYSIS III. THREE PART AVOIDABLE AMBIGUITY TEST IV. INSOLUBLY AMBIGUOUS TEST INVITES GAMESMANSHIP V. CONCLUSION

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About the Author

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This version: UnitedCarbonDec4.pdf December 30, 2013.

**

Pfizer Canada Inc. v. Canada (Minister of Health), [2005] F.C.J. No. 2155 (Federal Court of Canada 2005)(Hughes, J.)(quoting Natural Colour Kinematograph Company Limited v Bioschemes Limited (1915) 32 RPC 256, 266 (1915)(Loreborn, J.))(emphasis added; rephrased as shown in brackets and reformatted with paragraph numbers added).

APPENDIX: Wegner, The Lord Loreborn Test

I. OVERVIEW Judge Roger Hughes quotation of the Lord Loreborn test for claim indefiniteness is only one of the more recent opinions to restate a nearly century old standard in Commonwealth countries to determine when a claim is invalid as indefinite. Without benefit of a test of this nature, the United States struggles to determine when a claim should be thrown out as indefinite; fuzzy boundaries encourage sloppy claim drafting to the detriment of the patent community. Instead, the Federal Circuit sanctions clearly ambiguous language as long as the ambiguity is not insoluble. The Supreme Court has not directly addressed claim ambiguity in the sense of fatal indefiniteness for the more than seventy years since of United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942). It is inevitable that at some point in the not too distant future the Court will grant certiorari to focus upon whether the Federal Circuit test should remain the law. The only question about grant of certiorari is when this will happen. The next opportunity for the Court to grant review is Friday, January 10th, at its Conference when a vote may be expected as to whether to grant review in Nautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369, opinion below, Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 900 (Fed. Cir. 2013)(Wallach, J.), where Petitioner asks whether the Federal Circuits acceptance of ambiguous patent claims with multiple reasonable interpretations so long as the ambiguity is not insoluble by a court defeat the statutory requirement of particular and distinct patent claiming?

APPENDIX: Wegner, The Lord Loreborn Test

The United States has two different lines of case law for the interpretation of patent claims with respect to indefiniteness under 35 USC 112(b). The Supreme Court has a zone of uncertainty test while the Federal Circuit is seemingly more forgiving of patentee draftsmanship mistakes by concluding that claims are fatally indefinite only if insolubly ambiguous. See II, Clashing Analytical Metrics for Claim Analysis.

Only one court has cited with approval the middle ground solution of nearly a full century ago in Natural Colour Kinematograph that asks whether claim language is avoidably obscure or ambiguous. Natural Colour Kinematograph Company, 32 RPC at 266: It is no excuse that the drafting error was due to carelessness or to want of skill; the test was relied upon in an early Ninth Circuit opinion. Id. See III, The Three Part Test of Lord Loreborn. A further difficulty with the insolubly ambiguous test for invalidity is that patentees are encouraged to draft claims that come just short of meeting that standard, yet which are unnecessarily vague and indefinite to the detriment of competitors. See IV, Insolubly Ambiguous Test Invites Gamesmanship.

APPENDIX: Wegner, The Lord Loreborn Test

II. CLASHING ANALYTICAL METRICS FOR CLAIM ANALYSIS

The United States currently has two different lines of case law to determine whether a claim is fatally indefinite under what is now 35 USC 112(b). On the one hand, there is the United Carbon line of case law that focuses upon the zone of uncertainty created by ambiguities in the claim language, whereas the Federal Circuit follows the Datamize test as to whether a claim is insolubly ambiguous. United Carbon, supra; Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). A. The Supreme Court Zone of Uncertainty Test The Supreme Court in United Carbon set forth a zone of uncertainty test for determining whether a claim is fatally indefinite: [T]he limits of a patent must be known for the protection of the patentee, the encouragement of the inventive genius of others and the assurance that the subject of the patent will be dedicated ultimately to the public. [General Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, 369 (1938).] Otherwise, a zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field, United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942), and the public [would] be deprived of rights supposed to belong to it, without being clearly told what it is that limits these rights. Merrill v. Yeomans, 94 U.S. (4 Otto) 568, 573 (1877). Markman v. Westview Instruments, 517 U.S. 370, 390 (1996)(dictum)(emphasis added). The quoted passage from United Carbon is from a longer statement:

APPENDIX: Wegner, The Lord Loreborn Test

The statutory requirement of particularity and distinctness in claims is met only when they clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. A zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims would discourage invention only a little less than unequivocal foreclosure of the field. Moreover, the claims must be reasonably clear-cut to enable courts to determine whether novelty and invention are genuine. * * * While we do not find it necessary to consider questions of novelty and invention, in the view we take of the claims in suit, a mere reading of prior art patents shows how, if they are read with the liberality and inclusiveness claimed for those in suit, they describe products, if not identical, at least of confusing similarity. Whether the vagueness of the claim has its source in the language employed or in the somewhat indeterminate character of the advance claimed to have been made in the art is not material. An invention must be capable of accurate definition, and it must be accurately defined, to be patentable. Cf.General Electric Co. v. Wabash [Appliance Corp., 304 U.S. 364, 372-73 (1938)] United Carbon, 317 U.S. at 236-37 (footnote omitted).

B. The More Liberal Federal Circuit Approach

The Federal Circuit sustains or denies ambiguous claims under a test expressed in Datamize: A claim is indefinite only when it is not amenable to construction or insolubly ambiguous. Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008)(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)). The insolubly ambiguous test was recently explained in Teva v. Sandoz:

APPENDIX: Wegner, The Lord Loreborn Test

To prove indefiniteness [under the Federal Circuit insolubly ambiguous test], an accused infringer must demonstrate by clear and convincing evidence that one skilled in the relevant art could not discern the boundaries of the claim based on the claim language, the specification, the prosecution history, and the knowledge in the relevant art. Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363, 1367 (Fed. Cir. 2013)(Moore, J.)(quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1366 (Fed. Cir. 2011)).

As noted in the opinion of the Federal Circuit in the Nautilis case now at the Supreme Court, a claim may pass 112(b) muster even where its scope is not plain on [its] face, the task to resolve the scope is formidable and requires some experimentation and where in the end reasonable persons will disagree: [W]e have not insisted that claims be plain on their face in order to avoid a determination of invalidity for indefiniteness. Exxon [Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)]. If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds. Id. In addition, * * * the fact that some experimentation may be necessary to determine the scope of the claims does not render the claims indefinite. Id. at 1379. Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 901-02 (Fed. Cir. 2013)(Wallach, J.)

APPENDIX: Wegner, The Lord Loreborn Test

III. THE THREE PART TEST OF LORD LOREBORN The noted Canadian jurist, Roger Hughes, points to [t]he bedevilling of the law by the ghosts of the[ ] earlier, pre-claim, cases [which] is evident in the cri de coeur of Lord Loreburn in Natural Colour Kinematograph Co. Ltd. v. Bioschemes Ltd, (1915) 32 R.P.C. 256, 266 (H.L.) where he speaks of counsel shaping and reshaping a claim with references to the specification and other evidence[.] Pfizer Canada Inc. v. Canada (Minister of Health), [2005] F.C.J. No. 2155 (Federal Court of Canada 2005)(Hughes, J.).

In essence, Lord Loreborn sets forth a three part test to determine whether a claim is fatally ambiguous: It is the duty of patentee to state clearly and distinctly, either in direct words or by clear and distinct reference, the nature and limits of what he claims. [1] If [the patentee] uses language which, when fairly read, is avoidably obscure or ambiguous, the Patent is invalid[.] [2] [The conclusion of invalidity is reached] whether the defect be due to design, or to carelessness or to want of skill. [3] Where the invention is difficult to explain, due allowance will, of course, be made for any resulting difficulty in the language. But nothing can excuse the use of ambiguous language when simple language can easily be employed, and the only safe way is for the patentee to do his best to be clear and intelligible. Pfizer Canada v. Canada (quoting in Natural Colour Kinematograph, 32 R.P.C. at 266 (numbering and paragraphing added)).

APPENDIX: Wegner, The Lord Loreborn Test

Judge Hughes is far from a voice crying in the patent wilderness. Several jurists have recited the test of Lord Loreborn. Imperial Chemical Industries v. Montedison (UK) Ltd, [1995] RPC 449 (Court of Appeal 1995)(UK)(Stuart-Smith, J.); Wake Forest University Health Sciences v. Smith & Nephew Pty Ltd, 92 I.P.R. 496, 822 (Federal Court of Australia 2011)(Dodds-Streeton, J.). As pointed out by the Ninth Circuit in Otis Elevator, [i]t is [the] delimitation of the extent of the monopoly which is the function of the modern claim. Avoidable ambiguity in the delimitation may, under the modern English cases, invalidate the entire patent. Otis Elevator Co. v. Pacific Finance Corp., 68 F.2d 664, 667 (9th Cir. 1934)(citing Natural Colour Kinematograph)(emphasis added). IV. INSOLUBLY AMBIGUOUS TEST INVITES GAMESMANSHIP The insolubly ambiguous test encourages gamesmanship in claim drafting where patentees are able to gain claims that would be invalid under the Lord Loreborn test but which can be figured out with difficulty and thus be sustained because they are not insolubly ambiguous. The routine use even today of means-defined elements in claims where there is only vague support for such elements in the specification is a major example: What other reason does a patentee have to employ a means-defined element in his claims.

APPENDIX: Wegner, The Lord Loreborn Test

It is one thing to give a pass to the patentee who has difficulty drafting claims where the invention is difficult to explain as noted by Lord Loreburn. But it is entirely a different situation where the patentee is able to craft clear claims but chooses instead to game the system: * * * I think this Patent is bad from ambiguity in the Specification. There seems to be some danger of the well known rule of law against ambiguity being in practice invaded. Some of those who draft Specifications and Claims are apt to treat this industry as a trial of skill, in which the object is to make the Claim very wide upon one interpretation of it, in order to prevent as many people as possible from competing with the patentee's business and then to rely upon carefully prepared sentences in the Specification which, it is hoped, will be just enough to limit the Claim within safe dimensions if it is attacked in Court. This leads to litigation as to the construction of Specifications, which could generally be avoided if at the outset a sincere attempt were made to state exactly what was meant in plain language. The fear of a costly law suit is apt to deter any but wealthy competitors from contesting a Patent. This is all wrong. It is an abuse which a Court can prevent, whether a charge of ambiguity is or is not raised on the Pleadings, because it affects the public by practically enlarging the monopoly, and does so by a kind of pressure which is very objectionable. * * * I cannot see what purpose there could have been using the roundabout language here employed, which has provoked so much argumentative subtlety and taken up so much time, unless the object was to hold in reserve a variety of constructions for use if the Patent should be called in question, and in the meantime to frighten off those who might be disposed to challenge the Patent. Pfizer Canada v. Canada (quoting in Natural Colour Kinematograph, 32 R.P.C. at 266)(emphasis added).

APPENDIX: Wegner, The Lord Loreborn Test

V. CONCLUSION

Given that it has been more than seventy years since United Carbon, grant of certiorari in Nautilis v. Biosig is very far from a certain thing. What is clear, however, is that at some point in the coming years the Court will revisit United Carbon if the insolubly ambiguous test goes forth, unabated.

To the extent that certiorari is denied in Nautilis v. Biosig this will give the Federal Circuit additional time to work out a better solution than the extreme test of whether a claim is insolubly ambiguous before dropping the invalidity hammer.

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APPENDIX: Wegner, The Lord Loreborn Test

About the Author:

His involvement with other academic institutions has included service as a Visiting Professor at Tokyo University and as an adjunct professor at the Georgetown University Law Center. Prof. Wegners patent career commenced with service at the U.S. Department of Commerce as a Patent Examiner. He spent three years as a Wissenschaftliche Mitarbeiter at the Max-Planck-Institut fr Geistiges Eigentum in Munich, and thereafter was a Kenshuin at the Kyoto University Law Faculty. Prof. Wegner holds degrees from Northwestern University (B.A.) and the Georgetown University Law Center (J.D.). This paper represents the personal opinions of the author which do not necessarily reflect the views of any colleague, organization or client thereof. hwegner@foley.

HAROLD C. WEGNER

is a partner in the international law firm of Foley & Lardner LLP where he focuses upon strategic counseling and patent appellate and opinion practice. Prof. Wegner is the former Director of the Intellectual Property Law Program and Professor of Law at the George Washington University Law School.

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