In the Supreme Court of the United States

Transcription

1 No In the Supreme Court of the United States NAUTILUS, INC., PETITIONER v. BIOSIG INSTRUMENTS, INC. ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT BRIEF OF THE AMERICAN BAR ASSOCIATION AS AMICUS CURIAE IN SUPPORT OF NEITHER PARTY Of Counsel: JOHN P. ELWOOD WILLIAM L. LAFUZE STEPHEN C. STOUT AJEET P. PAI JAMES R. SILKENAT Counsel of Record PRESIDENT, AMERICAN BAR ASSOCIATION 321 N. Clark Street Chicago, IL (312) americanbar.org Counsel for Amicus Curiae

2 QUESTION PRESENTED Amicus curiae the American Bar Association will address the following question: Does the Federal Circuit s 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? (I)

3 II TABLE OF CONTENTS QUESTION PRESENTED...I APPENDIX CONTENTS...III TABLE OF AUTHORITIES... IV INTEREST OF THE AMICUS CURIAE... 1 SUMMARY OF ARGUMENT... 3 ARGUMENT... 6 I. Adopting Petitioner s Stringent Test For The Statutory Requirement Of Definiteness Does Not Address The Concerns Motivating Current Patent Reform Efforts... 6 II. This Court Has Long Required That The Definiteness Requirement Strike A Proper Balance Between Notice And Practical Necessity... 9 A. This Court Has Recognized That Practical Necessity Demands Only Reasonable Certainty In The Application Of The Statutory Requirement For Definiteness B. The Federal Circuit s Standard For Determining Definiteness Properly Looks To Whether A Person Of Ordinary Skill In The Relevant Art Would Understand What Is Claimed III. The Practical Effects Of Adopting Petitioner s Proposed Test Are Undesirable And Undermine The Purpose Of 35 U.S.C. 112, Second Paragraph... 19

4 III CONCLUSION APPENDIX CONTENTS Appendix A American Bar Association Resolution a

5 Cases IV TABLE OF AUTHORITIES Page(s) Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363 (Fed. Cir. 2006) Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 1003 (Fed. Cir. 2012) Beachcombers Int l, Inc. v. WildeWood Creative Prods., Inc., 31 F.3d 1154 (Fed. Cir. 1994) Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403 (1902)... 11, 18 Datamize LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) ebay Inc. v. MercExchange, L.L.C., 547 U.S. 388 (2006)... 6 Eibel Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45 (1923)... 11, 12, 17, 18 Energizer Holdings, Inc. v. Int l Trade Comm n, 435 F.3d 1366 (Fed. Cir. 2006) Exxon Research & Eng g Co. v. United States, 265 F.3d 1371 (Fed. Cir. 2001) Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002)... 9, 14, 15, 19 Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310 (Fed. Cir. 2013) Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364 (1938)... 13

6 V Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008) Honeywell Int l, Inc. v. Int l Trade Comm n, 341 F.3d 1332 (Fed. Cir. 2003) Machinery Corp. of Am. v. Gullfiber AB, 774 F.2d 467 (Fed. Cir. 1985) Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996)... 11, 18 Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1916)... 12, 13 Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348 (Fed. Cir. 2003) Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005) United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)... 11, 18 Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (Fed. Cir. 1996) Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795 (Fed. Cir. 1999) Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) Constitution, Statutes and Rules 35 U.S.C passim 35 U.S.C Fed. R. Civ. P

7 VI H.R. 845, 113th Cong (2013)... 8 H.R. 2024, 113th Cong (2013)... 8 H.R. 2639, 113th Cong (2013)... 8 H.R. 2766, 113th Cong (2013)... 8 H.R. 3540, 113th Cong (2013)... 8 Innovation Act, H.R. 3309, 113th Cong. (2013)... 8 Leahy-Smith America Invents Act, Pub. L. No , 125 Stat. 284 (2011) Patent Act of July 4, 1836, ch. 357, 5 Stat. 119, 6 (1836) Patent Act of July 8, 1870, ch. 230, 16 Stat. 201, 26 (1870) S. 866, 113th Cong (2013) S. 1013, 113th Cong (2013) S. 1612, 113th Cong (2013) S. 1720, 113th Cong (2013) U.S. Const. art. 1, 8, cl Miscellaneous ABA amicus brief information, available at 2 ABA General Information, available at elegates.html... 2

8 VII Fact Sheet: White House Task Force on High- Tech Patent Issues, Office of the Press Secretary (June 4, 2013), available at 7 Randall R. Rader, et al., Op-Ed., Make Patent Trolls Pay in Court, N.Y. TIMES, June 4,

9 INTEREST OF THE AMICUS CURIAE 1 The American Bar Association ( ABA ) respectfully submits this brief in support of neither party. The ABA urges that, consistent with this Court s current jurisprudence, the definiteness requirement of 35 U.S.C. 112, second paragraph, requires striking a balance between public notice and the practical realities of claim drafting, and that any benefits that may be derived from adopting petitioner s unreasonably rigid definiteness standard will be far outweighed by the resulting negative effects on both patent prosecution practice and claim construction practice before the district courts. The ABA is the largest voluntary professional membership organization and the leading organization of legal professionals in the United States. Its nearly 400,000 members come from all fifty states and other jurisdictions, and include attorneys in private law firms, corporations, non-profit organizations, government agencies, and prosecutor and public defender offices. They also include judges, 1 No counsel for a party authored this brief in whole or part, and no counsel or party made a monetary contribution to fund the preparation or submission of this brief. No person other than the amicus curiae, its members, and its counsel made any monetary contribution to this brief s preparation and submission. The parties have consented to this filing. (1)

10 2 legislators, law professors, law students, and nonlawyer associates in related fields. 2 The ABA s Section of Intellectual Property Law ( IPL Section ) is the world s largest organization of intellectual property professionals. Its approximately 24,000 members represent patent owners, accused infringers, individual inventors, large and small corporations, research institutions, and public and private colleges and universities across a wide range of technologies and industries. Formed in 1894, the IPL Section works to promote the development and improvement of intellectual property law and takes an active role in the consideration of proposed legislation, administrative rule changes and international efforts. The Section also presents resolutions to the ABA House of Delegates for adoption as ABA policy. 3 These policies then provide a basis for the preparation of ABA amicus curiae briefs, 2 Neither this brief nor the decision to file it should be interpreted to reflect the view of any judicial member of the ABA. No member of the Judicial Division Council participated in the adoption or endorsement of the positions in this brief, nor was it circulated to any member of the Judicial Division Council before filing. 3 Only recommendations adopted by vote of the ABA s House of Delegates, but not the accompanying reports, become ABA policy. The House of Delegates is composed of 560 delegates representing states and territories, state and local bar associations, affiliated organizations, sections and divisions, ABA members and, among others, the Attorney General of the United States. See ABA House of Delegates - General Information, available at leadership/delegates.html, and ABA amicus brief information, available at

11 3 which are filed primarily in this Court and the Court of Appeals for the Federal Circuit. Through a collaborative process, the diverse membership of the IPL Section developed consensus positions on the meaning of the definiteness requirement under 112, second paragraph. The IPL Section has concluded that the present balancing approach best protects public notice while recognizing that, as a practical matter, practitioners and inventors cannot in all cases reduce inventions to writing with such clarity that no dispute will ever arise. Its recommendations embodying this conclusion were adopted as policy by the ABA s House of Delegates as ABA Resolution 117 (policy adopted August 2011) and, with their accompanying report, are set out in full in the Appendix. The ABA takes no position as to which party should prevail in this case. The ABA, instead, submits this brief to assist the Court in considering the principles that should govern all patents under the law of definiteness. SUMMARY OF ARGUMENT The ABA submits that current law strikes the appropriate balance between the notice function of patent claims and the need to accommodate practical difficulties inherent in drafting patent claims. Under that established jurisprudence, the determination of whether issued patent claims are sufficiently definite under 35 U.S.C. 112, second paragraph, looks not to

12 4 whether claim language is subject to more than one reasonable interpretation, but instead whether a person of ordinary skill would understand what is claimed. Adopting the unreasonably stringent test for definiteness for issued patents that petitioner advocates would adversely change this Court s definiteness jurisprudence for all patents and patent owners. The statutory definiteness requirement addresses the need for public notice of the scope of patent claims. But as this Court s decisions have long recognized, that need must be tempered to provide adequate protection of inventions and appropriate incentives for innovation. Accordingly, this Court has held that a claim is sufficiently definite so long as a person of ordinary skill in the art would understand the boundaries of what is claimed. This wellestablished principle of claim construction should be preserved. The Court of Appeals for the Federal Circuit, in applying these principles, has used different formulations, including the phrase insolubly ambiguous. But rather than articulating a separate test for definiteness, the factual settings in which that formulation is used demonstrate that it is simply a shorthand for the well-established principle that claims are indefinite when a person of ordinary skill cannot discern the scope of the claims in light of the specification and prosecution history.

13 5 Petitioner seeks to elevate notice above all other considerations, urging that claim language be deemed indefinite if it is amenable to multiple reasonable interpretations. But few claims will be so clear that no uncertainty can be found in their interpretation. Under this Court s jurisprudence, the proper question should be whether the patent claims are sufficiently definite and descriptive to permit a court to resolve any concrete disputes between the parties by applying the traditional tools of claim construction a task that courts are well-equipped to undertake using existing law. Finally, adoption of petitioner s stringent definiteness requirement would adversely affect both patent litigation before the district courts and patent prosecution before the U.S. Patent & Trademark Office. Litigants would have an incentive to advance multiple reasonable interpretations of any claim term, forcing patent practitioners and inventors to draft a multiplicity of claims to try to capture every possible variation of an invention and to guard against later possible assertions of indefiniteness. Accordingly, the ABA urges the Court to reaffirm that, in determining whether an issued patent claim satisfies the definiteness requirement of Section 112, second paragraph, the appropriate test remains whether a person of ordinary skill in the art would understand the bounds of the claim in light of the specification and prosecution history.

14 6 ARGUMENT I. Adopting Petitioner s Stringent Test For The Statutory Requirement Of Definiteness Does Not Address The Concerns Motivating Current Patent Reform Efforts Petitioner s invitation to significantly tighten the application of the statutory definiteness requirement comes to the Court amid a groundswell of patent reform efforts from all branches of the government. Most of these efforts, however, have not sought to adjust the balance struck by patent law s substantive requirements for patentability. Instead, they have been in response to concerns over the litigation activities of some firms that own patents, but do not practice them. 4 That is, the reform efforts have sought to target those activities while preserving the patent system s overarching purpose to promote the Progress of Science and useful Arts. U.S. Const. art. 1, 8, cl. 8. The Court should decline to adjust the patent system s statutory definiteness requirement 4 Firms that own patents, but do not practice them (i.e., do not make, use or sell products or methods claimed by those patents) are commonly referred to as non-practicing entities ( NPEs ). Some NPEs use patents only to seek licensing revenue or settlements and judgments from patent infringement litigation. See ebay Inc. v. MercExchange, L.L.C., 547 U.S. 388, 396 (2006) (Kennedy, J., concurring). A type of NPE that is perceived as employing unduly aggressive litigation tactics (such as bringing suit in the name of a shell company or suing hundreds of defendants simultaneously) is sometimes called a patent assertion entity, or, pejoratively, a patent troll.

15 7 here in a manner that would negatively affect all patents held by all patent owners. The majority of recent reform efforts have sought to remedy concerns over the perceived disparities in the burdens and costs borne by plaintiffs and defendants in patent infringement lawsuits, particularly in view of the rise, in recent years, of lawsuits initiated by patent assertion entities. These concerns are echoed by petitioner and its amici. But to address those concerns, the current reform proposals focus on procedural changes to the litigation process, including fee-shifting, rather than wholesale substantive changes to the requirements for patentability. For example, in June 2013, the President issued a set of legislative recommendations and executive orders for patent reform. See Fact Sheet: White House Task Force on High-Tech Patent Issues, Office of the Press Secretary (June 4, 2013), available at 04/fact-sheet-white-house-task-force-high-tech-patentissues. The President called for patent policies aimed at protecting innovators from frivolous litigation and ensuring high-quality patents, and his proposals included allowing courts greater discretion to award attorney s fees and protecting customers and other end-users from patent infringement liability. On the same day, the Chief Judge of the United States Court of Appeals for the Federal Circuit coauthored an editorial similarly aimed at patent

16 8 assertion entities. Randall R. Rader, et al., Op-Ed., Make Patent Trolls Pay in Court, N.Y. TIMES, June 4, The Chief Judge urged district courts to more vigorously exercise their authority under both the patent statute s existing fee-shifting provision, 35 U.S.C. 285, as well as Rule 11 of the Federal Rules of Civil Procedure, to discourage aggressive litigation and frivolous demands brought by some patent assertion entities. Id. Congress too is at work on patent reform, with a number of bills that would implement some of the President s proposals for curbing perceived abusive litigation practices by some patent assertion entities. 5 Indeed, the House of Representatives has already passed one such bill, H.R. 3309, which includes provisions aimed at (1) heightening pleading requirements for claims of patent infringement, (2) making the award of fees and expenses to the prevailing party presumptive in patent-related cases, and (3) deferring discovery in patent-related cases until after the district court has construed the claims of the patents-in-suit. Innovation Act, H.R. 3309, 113th Cong. (as passed by the House of Representatives on Dec. 5, 2013). Also, in December 2013, the Senate conducted hearings on S. 1720, largely a counterpart to H.R. 3309, and that bill remains under consideration. 5 See, e.g., H.R. 845, 113th Cong. (2013); H.R. 2024, 113th Cong. (2013); H.R. 2639, 113th Cong. (2013); H.R. 2766, 113th Cong. (2013); H.R. 3540, 113th Cong. (2013); S. 866, 113th Cong. (2013); S. 1013, 113th Cong. (2013); S. 1612, 113th Cong. (2013); S. 1720, 113th Cong. (2013).

17 9 A revision to the substantive requirements for definiteness, the ABA submits, would not address the litigation-related concerns motivating the reform efforts. Petitioner s request would affect all patents, not merely those asserted in overly aggressive litigation by particular types of patent assertion entities. As set out below, this Court s current jurisprudence strikes the right balance between the notice function of claims and the practical necessities involved in claim drafting; a more stringent definiteness requirement for issued patents would threaten that balance. II. This Court Has Long Required That The Definiteness Requirement Strike A Proper Balance Between Notice And Practical Necessity A well-functioning patent system demands claims that provide clear notice to the public. 6 But it must also secure to inventors, who rely on the promise of the law to bring the invention forth, the fruits of their labors. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731 (2002). Like other doctrines that seek to maintain what this Court has termed the delicate balance between these competing interests, id., any test for determining whether a patent claim satisfies Section 112 s definiteness standard must adequately account for the imprecisions inherent in reducing an invention to the form of words. 6 As discussed below, the public in this context refers to persons of skill in the pertinent art, rather than to laypersons.

18 10 In contrast to the inflexible standard advocated by petitioner and its amici, which seeks to elevate notice above all other considerations, this Court and the Federal Circuit have long applied a more balanced approach that asks whether one of ordinary skill in the art that person to whom the patent disclosure is directed would understand what is claimed. This well-established approach is necessary for a robust patent system that protects innovation. A. This Court Has Recognized That Practical Necessity Demands Only Reasonable Certainty In The Application Of The Statutory Requirement For Definiteness 1. Under 35 U.S.C. 112, a patent specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 7 This statutory requirement, known as definiteness, dates at least to the 1870 Patent Act, which obliged an applicant to particularly point out and distinctly claim the part, improvement, or combination which he claims as his invention or discovery. Act of July 8, 1870, ch. 230, 26, 16 Stat. 198, 201 (1870); see 7 The Leahy-Smith America Invents Act, Pub. L. No , 125 Stat. 284 (2011), reformatted the second paragraph of 35 U.S.C. 112 as 112(b) in a manner that is not material to the issues before the Court. The revised provision requires that a patent application shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. Id.

19 11 Markman v. Westview Instruments, Inc., 517 U.S. 370, 379 (1996); see also Act of July 4, 1836, ch. 357, 6, 5 Stat. 117, 119 (1836) (requiring applicant to particularly specify and point out the part, improvement, or combination, which he claims as his own invention or discovery ). This Court has explained that a principle purpose underlying the definiteness requirement is to provide notice of what is claimed, to prevent [a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942). However, the public notice provided by a patent specification is directed not to a layperson, but to one of skill in the art, and it is by that measure that definiteness must be determined. As the Court explained in an early case relating to a steel process patent: The specification of the patent is not addressed to lawyers, or even to the public generally, but to the manufacturers of steel; and any description which is sufficient to apprise them in the language of the art of the definite feature of the invention, and to serve as a warning to others of what the patent claims as a monopoly, is sufficiently definite to sustain the patent. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437 (1902); accord Eibel Process Co. v. Minn. & Ontario Paper Co., 261 U.S. 45, 65 (1923) (paper-

20 12 making patent and its specification were manifested to readers who were skilled in the art of paper making ). 2. For over a century, this Court s cases have recognized that the notice function of a patent claim must be tempered by the practical realities of claim drafting. In Eibel Process, for example, the Court considered an indefiniteness challenge to a patent disclosing a machine for making paper more quickly by harnessing the effects of gravity. 261 U.S. at The patent described a critical limitation in relative, rather than absolute, terms specifically, that one end of the paper-making machinery was to be maintained at a substantial or high elevation or pitch. Id. at Though it observed that [i]ndefiniteness is objectionable, because the patent does not disclose to the public how the discovery * * * can be made useful, and how its infringement may be avoided, the Court rejected both the challenge to the patent and the notion of a stringent definiteness requirement: [i]t was difficult for [the patentee] to be more definite, due to the varying conditions of paper stock and the necessary variation in the pitch to be used to accomplish the purpose of his invention. Id. at 65. And more importantly, the Court explained, a person of ordinary skill in the art had no difficulty understanding what the patentee claimed. Id. at Likewise, in Minerals Separation, Ltd. v. Hyde, a case involving an improved method for ore processing, the Court observed that the certainty which the law

21 13 requires in patents is not greater than is reasonable, having regard to their subject-matter. 242 U.S. 261, 270 (1916); cf. Gen. Elec. Co. v. Wabash Appliance Corp., 304 U.S. 364, (1938) (rejecting claims for failure of description but noting that [t]he difficulty of making adequate description may have some bearing on the sufficiency of the description attempted ). The Minerals Separation patentee failed to specify the optimum amount of oil to be used for processing particular ores using the method, and instead claimed an indeterminate range (an unspecified fraction of one percent of the ore). 242 U.S. at Yet the Court explained that the claims were nevertheless sufficiently described because the range of treatment within the terms of the claims, while leaving something to the skill of persons applying the invention, is clearly sufficiently definite to guide those skilled in the art to its successful application. Id. at 271. Indeed, the practical necessities of claim drafting precluded requiring more: it is obviously impossible to specify in a patent the precise treatment which would be most successful and economical in each case. Id. In contrast, the Court invalidated three claims that lacked any range or boundary that would permit a person of ordinary skill to understand what was claimed. Id. 3. Similarly, this Court has in other contexts recognized that the notice function of claim language must be tempered by the need to avoid depriving inventors of the benefit of the patent bargain. Most notably, the Court has repeatedly declined to speak

22 14 the death of the doctrine of equivalents, which, like the Court s current approach to definiteness, permits some uncertainty in the scope of claim language. See Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 21 (1997). Under that doctrine, which prevents infringers from evading a patent by making unsubstantial changes, a product that does not literally infringe upon the express terms of a patent claim may nonetheless be found to infringe if the product s elements are equivalent[] to those of the claim. Id. By permitting liability beyond the literal terms of the patent claim, the doctrine of equivalents unquestionably renders the scope of patents less certain. Festo, 535 U.S. at 732. And it has engendered concerns from dissenting Justices that are similar to those raised by the petitioner with regard to the definiteness requirement. See id. at (discussing history of dissenting views in cases and noting the doctrine may deter competitors from engaging in legitimate manufactures, cause them to invest by mistake in competing products that the patent secures, and result in wasteful litigation * * * that a rule of literalism might avoid ). Yet this Court has in each instance acknowledged this uncertainty as the price of ensuring the appropriate incentives for innovation. Id. at 732. The Court has explained why the law countenances this result: if patents were always interpreted by their literal terms, their value would be greatly diminished. Unimportant and

23 15 insubstantial substitutes for certain elements could defeat the patent, and its value to inventors could be destroyed by simple acts of copying. Id. at 731. This is an inherent limitation of claim drafting, because the nature of language makes it impossible to capture the essence of a thing in a patent application. Id. And while a patentee must particularly point out and distinctly claim his invention, [t]he language in the patent claims may not capture every nuance of the invention or describe with complete precision the range of its novelty. Id. These principles are of equal force with regard to the definiteness requirement. The Court has never demanded a complete absence of ambiguity from draftsmen seeking to secure to inventors their discoveries, and it should not do so now. B. The Federal Circuit s Standard For Determining Definiteness Properly Looks To Whether A Person Of Ordinary Skill In The Relevant Art Would Understand What Is Claimed 1. Consistent with this Court s focus on how a person of ordinary skill in the art would interpret a claim, the Federal Circuit has framed its standard for definiteness by stating: If one skilled in the art would understand the bounds of the claim when read in light of the specification, then the claim satisfies section 112 paragraph 2. Exxon Research & Eng g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).

24 16 Although its published opinions reflect various formulations of this standard, as the Federal Circuit has explained, [t]he common thread in all of these cases is that claims were held indefinite only where a person of ordinary skill in the art could not determine the bounds of the claims, i.e., the claims were insolubly ambiguous. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008). As used by that court, insolubly ambiguous is not an expression of a rigid rule, as some have argued, but rather a shorthand manner of summarizing the myriad of ways in which a patent claim can fail to satisfy the definiteness requirement of Section 112. For example, the Federal Circuit has held claims indefinite where a patent term is entirely dependent on a person s aesthetic or subjective opinion, e.g. Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1366 (Fed. Cir. 2005); where a person of ordinary skill cannot determine which of multiple techniques yielding different results should be used to measure a claimed numeric limitation, e.g. Honeywell Int l, Inc. v. Int l Trade Comm n, 341 F.3d 1332, 1340 (Fed. Cir. 2003); where a construction can be articulated, but a person of ordinary skill cannot translate the definition into meaningfully precise claim scope, e.g. Halliburton, 514 F.3d at 1251; where a typographical error in a claim could be corrected in multiple ways, but a person of ordinary skill cannot determine which is correct, e.g., Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1354 (Fed. Cir. 2003); and where incurable technical defects are

25 17 present. 8 To be sure, the phrase insolubly ambiguous is perhaps more susceptible to misinterpretation by district courts than more conventional formulations that the Federal Circuit has articulated in other cases. But the court s use of the phrase in cases where a person of ordinary skill would not know what is claimed demonstrates that the common thread in these cases is the definiteness principle articulated by this Court. 2. Few patent practitioners would disagree that the types of claims identified in the cases noted above are indefinite. Petitioner s complaint involves a different kind of indeterminacy claim: that a claim should be found to be indefinite per se when the claim language is susceptible to more than one reasonable reading. But petitioner s proposed test is incompatible with this Court s indefiniteness jurisprudence. Otherwise, the mere amenability of an issued patent claim to more than one reasonable construction, without more, would have required a different result in Eibel Process, as either substantial and high could 8 For example, a patent claim to a particular machine or system is indefinite where it contains a term that describes a function, but discloses no structural component to perform that function. See, e.g., Function Media, L.L.C. v. Google, Inc., 708 F.3d 1310, 1319 (Fed. Cir. 2013). A patent claim may also be indefinite if a claim term lacks antecedent basis and the meaning is not reasonably ascertainable to a person of ordinary skill. Energizer Holdings, Inc. v. Int l Trade Comm n, 435 F.3d 1366, (Fed. Cir. 2006).

26 18 plainly mean any number of reasonable things. See 261 U.S. at Indeed, few patents will be so clear that no uncertainty can be raised as to the interpretation of their claims. To limit the inquiry to whether claim language is amenable to more than one reasonable interpretation, without more, as a test for definiteness would encourage litigants to advance reasonable interpretations of any term of an issued, presumedvalid patent, when the proper issue should be whether a court can resolve any real and concrete dispute between the parties regarding infringement or invalidity. Cf. United Carbon, 317 U.S. at 236 (purpose of requiring reasonably clear-cut claims is to enable courts to determine whether novelty and invention are genuine ). Disputes over the meaning of particular terms in patent claims are routine, and resolving them is the familiar province of the court. See Markman, 517 U.S. at In that role, the court determines what a hypothetical person of ordinary skill in the art would understand the boundaries of the claim to be in light of the patent specification and prosecution history. See Phillips v. AWH Corp., 415 F.3d 1303, (Fed. Cir. 2005); see also Carnegie Steel, 185 U.S. at 432 (noting that a claim of a patent must always be explained by and read in connection with the specification ). When there is a concrete dispute between the parties as to what a person of ordinary skill would understand a patent to claim, any uncertainty that may exist until a court has resolved

27 19 the dispute through claim construction is simply an unavoidable byproduct of both the adversarial system and an effort to balance, as this Court has required, clarity in claim scope and incentives to innovate. See Festo, 535 U.S. at 731. III. The Practical Effects Of Adopting Petitioner s Proposed Test Are Undesirable And Undermine The Purpose Of 35 U.S.C. 112, Second Paragraph Beyond upsetting the balance between the notice function of claims and the necessary imprecision of claim drafting, invalidating claims when more than one reasonable construction can be asserted will negatively affect both patent litigation in the district courts and patent prosecution practice before the U.S. Patent & Trademark Office. First, accused infringers in patent litigation will have an incentive to frustrate the court s efforts to construe the asserted claims. Claim construction is a necessary predicate to the determination of infringement and many validity issues. Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576, (Fed. Cir. 1996); Beachcombers Int l, Inc. v. WildeWood Creative Prods., Inc., 31 F.3d 1154, 1160 (Fed. Cir. 1994). If the existence of more than one reasonable claim construction establishes that a patent claim is indefinite, accused infringers will have a clear incentive to present multiple reasonable interpretations of the asserted claims, rather than advocating what they assert is the proper

28 20 construction of the claims, in an effort to establish that the claims are invalid as indefinite. 9 Further, if parties were to present genuinely opposing constructions of claim language, the trial court could conclude the claims at issue were valid as they are presumed to be only if it determined that one of the parties proposed constructions was not reasonable. Thus, the presentation of opposing, but presumptively reasonable, constructions would raise questions regarding the definiteness of the asserted claims in nearly every case. Moreover, a finding that a party s position was unreasonable would raise concerns for the determination of willful infringement or whether the case was exceptional for purposes of awarding attorney s fees. See Bard Peripheral Vascular, Inc. v. W.L. Gore & Assocs., Inc., 682 F.3d 9 A focus on whether claim terms are susceptible to multiple reasonable interpretations likewise would encourage litigants to dispute the meaning of tangential terms regardless of whether disputes regarding those terms meaningfully impact infringement or invalidity in the specific case. Determining the precise outer boundary of a claim offers little benefit when an infringer s conduct or the prior art is squarely in the center of the claimed subject matter. See, e.g., Abbott Labs. v. Baxter Pharm. Prods., Inc., 471 F.3d 1363, 1368 (Fed. Cir. 2006) (in anticipation analysis, numerical exactitude not required where any added precision was not necessary to resolve invalidity question). Patent law should not require courts to expend judicial resources on resolving claim-construction disputes under the guise of indefiniteness if the dispute does not affect substantive questions of infringement, invalidity, or the like. See, e.g., Vivid Techs., Inc. v. Am. Sci. & Eng g, Inc., 200 F.3d 795, 803 (Fed. Cir. 1999) (noting that only those terms need be construed that are in controversy, and only to the extent necessary to resolve the controversy ).

29 , 1006 (Fed. Cir. 2012); Machinery Corp. of Am. v. Gullfiber AB, 774 F.2d 467, (Fed. Cir. 1985). Finally, any benefits to be derived from petitioner s stringent definiteness requirement would be outweighed by its negative effects on both patent infringement litigation and patent prosecution practice before the U.S. Patent & Trademark Office. As discussed above, this Court s and the Federal Circuit s balanced approach to indefiniteness accommodates the inherent difficulty of reducing an invention to words. If that balance were shifted in favor of a more stringent standard for issued patents, patent practitioners would be forced to draft many more claims to try to capture every possible variation of an invention and provide alternate claim language to steel against later possible determinations of indefiniteness. Such a practice would increase the burden of examination and lead to inefficient practice. CONCLUSION For the reasons set forth above, the ABA urges the Court to reaffirm that, in determining whether a patent claim satisfies the definiteness requirement of Section 112, second paragraph, the courts should continue to look to whether a person of ordinary skill in the art would understand the bounds of the claim in light of the specification and prosecution history.

30 22 Respectfully submitted. Of Counsel: JOHN P. ELWOOD WILLIAM L. LAFUZE STEPHEN C. STOUT AJEET P. PAI JAMES R. SILKENAT Counsel of Record PRESIDENT, AMERICAN BAR ASSOCIATION 321 N. Clark Street Chicago, IL (312) americanbar.org MARCH 3, 2014 Counsel for Amicus Curiae

31 AMERICAN BAR ASSOCIATION ADOPTED BY THE HOUSE OF DELEGATES AUGUST 8-9, 2011 RESOLUTION 117 RESOLVED, That the American Bar Association supports the continued application by courts of the following legal principles to determine if an issued patent claim meets the definiteness requirement under 35 U.S.C. section 112, second paragraph (1) A claim meets the definiteness requirement if a person of ordinary skill in the relevant art would understand what is claimed; (2) The determination of whether a person of ordinary skill in the relevant art would understand what is claimed depends on whether the issued patent claim in question can be construed by a court to the extent necessary to resolve any real and concrete dispute between the parties. (3) Use of relative language or words of degree in an issued patent claim does not itself render a patent claim indefinite; (4) The application of different definiteness standards in the Patent Office for determining patentability and in the courts for determining (1a)

32 2a validity does not conflict given the different nature of the proceedings; and (5) The amenability of an issued patent claim to more than one reasonable construction does not itself render that claim indefinite if a court, by applying established principles of claim construction, can reasonably choose one of those possible constructions to resolve any real and concrete dispute between the parties. REPORT The Section of Intellectual Property Law asks for approval of this Resolution by the House of Delegates, which would support an Association brief amicus curiae in the U.S. Supreme Court in support of the respondent in the case of Enzo Biochem., Inc. v. Applera Corp., 599 F.3d 1325 (Fed. Cir. 2010), rehearing denied, 605 F.3d 1347 (2010). A petition for writ of certiorari to review a decision of the U.S. Court of Appeals for the Federal Circuit ( Federal Circuit ) in this case was filed in the Supreme Court on September 23, On December 13, 2010, the Supreme Court invited the Acting Solicitor General to file a brief in this case expressing the views of the United States Government. The report cannot be considered by the House of Delegates at a time later than the 2011 Annual Meeting since, if the writ of certiorari is granted during the October 2010 term of the Court, the deadline for filing the amicus brief in the Supreme Court will be reached before the next meeting of the House of Delegates.

33 3a The Resolution would support affirming the decision of the court below, in which the Federal Circuit reversed a summary judgment of the district court that held certain patent claims invalid by reason of indefiniteness. The definiteness requirement arises from the language of section 112 of the Patent Act (35 U.S.C. 112), which states that a patent must include one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Since its creation in 1982, the Federal Circuit has had jurisdiction over all patent appeals. The Resolution supports the continued application of rules of construction developed by the Federal Circuit for determining if an issued patent claim meets the statutory definiteness requirement. That requirement is met when a person of ordinary skill in the art would understand what is claimed, and that determination depends on whether the issued patent claim in question can be construed by a court to the extent necessary to resolve any real and concrete dispute between the parties regarding infringement or invalidity. The Resolution further supports continued recognition by courts that use of relative language or words of degree in an issued patent claim does not itself render a patent claim indefinite, and that application of different definiteness standards by the U.S. Patent and Trademark Office for determining patentability and by courts for determining validity of already issued patents do not conflict given the different nature of proceedings before the USPTO and an Article III Court.

34 4a Finally, the Resolution supports continued recognition that an issued patent claim that is amenable to more than one reasonable construction is not indefinite if a court, by applying established principles of claim construction, can reasonably choose one of those possible constructions to resolve any real and concrete dispute between the parties regarding infringement or invalidity. The Council of the Section of Intellectual Property approved this resolution and the accompanying report on March 15, The Issue in Dispute On September 23, 2010, Applera Corporation and Tropix Incorporated (together Applera ) filed a Petition for Writ of Certiorari with the United States Supreme Court, requesting review of the definiteness requirement under U.S. patent law as applied by the Federal Circuit in this case. More specifically, Applera s Petition asks the Supreme Court to decide whether the Federal Circuit s current standard for definiteness which Applera asserts to be that a claim is definite so long as the claim language is not insolubly ambiguous, or is merely capable of being construed is consistent with the statutory language of 35 U.S.C. 112, 2nd paragraph, which states that a patent must include claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C. 112, 2. Applera s petition comes following a March 2010 decision by the Federal Circuit reversing the district

35 5a court s summary judgment decision in Enzo Biochem v. Applera finding several of Enzo Biochem s asserted patent claims invalid for indefiniteness. The patent claims in question are drawn to labeled polynucleotides and their use to detect specific nucleic acid sequences (i.e., DNA sequences). In May 2010, the Federal Circuit denied Applera s request for a panel rehearing or rehearing en banc. Applera s position before the Supreme Court is that the Federal Circuit s current indefiniteness standard is inconsistent with the statutory language of 112, and its primary purpose: to put the public on notice of what the invention is and what are its metes and bounds. Applera argues that the Federal Circuit s merely capable of being construed and insolubly ambiguous alleged standards make it too easy for a patent claim to be found definite, or too difficult for a claim to be found indefinite. Applera states the question presented to be as follows: For a patent to be valid, its claims must be definite the patent must include claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. 35 U.S.C (emphasis in original). The Federal Circuit holds that this requirement of particular[ity] and distinct[ness] is satisfied so long as claim language is not insolubly ambiguous, or is merely capable of being construed. The question presented is: Whether the Federal Circuit s standard for definiteness is consistent with the language of 112.

36 6a Applera s Sept. 23, 2010 Petition at (i). The Definiteness Requirement and How the Resolution Addresses It It is commonly understood that the standard for assessing whether a patent claim is sufficiently definite under 35 U.S.C. 112, is whether one skilled in the art would understand the bounds of the claim when read in light of the specification. 1 The Federal Circuit aptly notes that [w]hile th[is] standard is easy to state, it has not always proved easy to apply. However, from this general principle, it logically follows that whether a patent claim is definite under 112 necessarily depends on whether the claim can be construed by a court in order to resolve a real or concrete dispute between the parties regarding infringement of invalidity. Indeed, this analysis furthers the policies behind the definiteness requirement: (1) to provide clear warning to others as to what constitutes infringement of the patent, and (2) to provide a clear measure of the invention in order to facilitate determinations of patentability [i.e., novelty and non-obviousness]. 2 Most would agree that it is relatively easy to determine that a claim fails to meet the definiteness requirement of 112, 2 if the claim is completely and utterly incapable of being construed, or carries 1 Exxon Research & Eng g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). 2 3 Donald S. Chisum, Chisum on Patents 8.03 (2009).

37 7a with it no objective standard or measurement by which the public can determine the scope of the claimed invention. Less certain, however, is the appropriate outcome when the patent claim at issue is amenable to more than one reasonable construction, or contains a term of degree and there exists intrinsic evidence that provides some indicia of how that term should be defined. These are some of the issues at play in the Applera matter, and which make drafting an all encompassing resolution on this matter more difficult than with other cases. The Resolution attempts to flesh out the requirement for definiteness of issued patent claims in as succinct a manner as possible, and to address the competing questions presented by Petitioner, Applera, and Respondent, Enzo Biochem. To this end, the Resolution addresses situations routinely seen in the context of a definiteness analysis, such as when words of degree are used in a patent claim (e.g., substantially or approximately), or when a claim is capable of more than one plausible construction. The policy reflected in the Resolution seeks to achieve a balance between respecting the validity of a patent once issued, and the need for the public to understand the boundaries of a patented invention in order to avoid infringement. This balance is met with the language of the Resolution. The Section of Intellectual Property Law advocates adoption by the House of Delegates of the policy reflected in the Resolution, for at least the following reasons: Because an issued patent claim is presumed valid, a heightened evidentiary standard is required in order to invalidate such claim (i.e.,

38 8a clear and convincing evidence). The current definiteness standards followed by the Federal Circuit, and expressed in the Resolution, comport with this presumption of validity. The law supports the notion that a court only must construe a claim to the extent necessary to resolve real disputes of infringement and validity between the parties. Restricting a claim construction/definiteness analysis to these circumstances prevents bogus indefiniteness claims, and advances the policies behind the definiteness requirement: (1) to put the public on notice of the scope of the invention to avoid infringement; and (2) to determine the scope of the invention as applied against prior art. The Resolution follows this principle. The law recognizes that in construing a claim term, some imprecision in the judicial construction is permissible so long as the factfinder can be given objective criteria for deciding the infringement or invalidity issue. The Resolution does not require absolute precision in order to meet the definiteness requirement. The law recognizes that a claim that can be construed is not automatically definite. Indeed, if the construed claim cannot be meaningfully applied (i.e., to determine infringement or validity), it will be invalid for indefiniteness. The Resolution incorporates this principle, by stating that a claim is not indefinite if the

39 9a claim in question can be construed to resolve any real or concrete dispute between the parties regarding infringement or invalidity. As the Federal Circuit has recognized, difficulty in construing a claim does not mean the claim is indefinite. To find otherwise would result in a great number of claims being invalidated on indefiniteness grounds. That the U.S. Patent and Trademark Office and Article III Courts apply somewhat different standards when conducting a definiteness analysis does not mean there is a real conflict that needs to be rectified. Indeed, these different standards are justified given the different roles played by the PTO and courts, and different rules under which each body operates when construing claims. The Resolution reflects this understanding. It is important to remember the need for balance between clarity and flexibility when considering the most appropriate standard for definiteness under 112. Absolute precision should not be required when drafting patent claims. The Supreme Court recognized this in its Festo decision by noting that patent claims are necessarily imprecise since an invention is a tangible thing, with its verbal description merely an afterthought written to satisfy the requirements of patent. 3 Thus, a patent claim s 3 Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd., 535 U.S. 722, 731 (2002).