A definite claim on claim indefiniteness: An empirical study of definiteness cases of the past decade with a focus on the federal circuit and the insolubly ambiguous standard

Journal of Intellectual Property

Volumn 10, Issue 1, 2010, Pages 25-43

  Laser, Christa J ^a  

^a GEORGE WASHINGTON UNIVERSITY   (United States)

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EID: 78449268367     PISSN: 15599493     EISSN: None     Source Type: Journal    
DOI: None     Document Type: Article

References (64)

1. 35 U.S.C. § 112 ¶ 2 (2006).
2. 3 DONALD S. CHISUM, CHISUM ON PATENTS § 8.03 (2009).
3. See 35 U.S.C. § 112 ¶ 2.
4. Universal Oil Prods. Co. v. Globe Oil & Refining Co., 322 U.S. 471, 484 (1944).
5. See U.S. PATENT AND TRADEMARK OFFICE, MANUAL OF PATENT EXAMINING PROCEDURE § 2173 (8th ed. 2008) [hereinafter M.P.E.P.].
6. See Athletic Alts., Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996).
7. Energizer Holdings, Inc. v. International Trade Comm'n, 435 F.3d 1366, 1369 (Fed. Cir. 2006).
8. United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942).
9. Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1255 (Fed Cir. 2008) ("We note that the patent drafter is in the best position to resolve the ambiguity in the patent claims, and it is highly desirable that patent examiners demand that applicants do so in appropriate circumstances so that the patent can be amended during prosecution rather than attempting to resolve the ambiguity in litigation.").
10. See, e.g., Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1575-76 (Fed. Cir. 1986) (where a patent on a wheelchair of a size capable of fitting in the back seat of a vehicle was held valid because the claim was "as precise as the subject matter permits"); Finisar Corp. v. DirecTV Grp, Inc., 523 F.3d 1323, 1341 (Fed. Cir. 2008) (citing Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1214 (Fed. Cir. 2003)) (stating that the Federal Circuit "does not impose a lofty standard in its indefiniteness cases").
11. 265 F.3d 1371, 1375 (Fed. Cir. 2001).
12. ("By finding claims indefinite only if reasonable efforts at claim construction prove futile, we accord respect to the statutory presumption of patent validity."); 35 U.S.C. § 282 (2006).
13. See Proctor & Gamble Co. v. Teva Pharm. USA, Inc., 566 F.3d 989, 993-94 (Fed. Cir. 2009) (citing AK Steel Corp. v. Sollac & Ugine, 344 F.3d 1234, 1238-39 (Fed. Cir. 2003)).
14. Exxon, 265 F.3d at 1375.
15. 535 U.S. 722 (2002).
16. Before Festo, the last case on claim indefiniteness was United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 55 USPQ 381 (1942)). This case was about the doctrine of equivalents, and thus the U.S.P.Q. did not index it under 115.1109, but the same policy espoused by the Court applies to claim indefiniteness.
17. Festo, 535 U.S. at 722.
18. (Quoting Autogiro Co. of Am. v. United States 384 F.2d 391, 397 (Ct. Cl. 1967)).
19. (Citing Winans v. Denmead, 56 U.S. 330, 15 How. 330, 343, 14 L. Ed. 717 (1854) ("The exclusive right to the thing patented is not secured, if the public are at liberty to make substantial copies of it, varying its form or proportions.")).
20. "Definite" will be used in text, graphs, and tables to mean "not indefinite." This alteration is designed to make the data easier to understand for readers not familiar with patent law's technically correct double negatives and to make tables fit more easily onto the page.
21. The time period was measured from volume 49 to volume 88 of the second edition of U.S.P.Q. (BNA), inclusive. Volume 49 contains some cases from late December 1998, while volume 88 excludes some cases from late December 2008.
22. One case, SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306 (Fed. Cir. 2004), is excluded from all of this Article's data; due to procedural issues, including a rehearing en banc, its inclusion would have caused data from the same situation to be counted twice. Also note that the data labeled as "all Federal Circuit indefiniteness cases" or any data not otherwise noted includes cases of all procedural types, including reversals of summary judgment, which operate by a different standard than, for example, reversal of the district court's judgment of indefiniteness.
23. Cases that contained a claim indefiniteness issue, for the purposes of this paper, are those indexed in the U.S.P.Q. (BNA) under 115.1109, "claim indefiniteness." The following data only account for the particular claim of the particular patent with definiteness issues. Some cases were remanded for issues with other patents or other claims discussed in the case. While some cases contained multiple claims with definiteness issues, in the particular cases in this study, the court either held all claims with definiteness issues definite or all such claims indefinite, typically because the contested language appeared in all such claims. Therefore, it was unnecessary to separate data according to total number of claims held definite or indefinite, although such an inquiry might produce valuable insights.
24. This is the number of Federal Circuit cases reported under volumes 49 to 88, inclusive, of the U.S.P.Q.
25. A valuable inquiry might ask how many Federal Circuit intellectual property cases were patent cases in order to determine what percentage of Federal Circuit patent cases contained a claim indefiniteness issue.
26. Where y=mx+b, m is the slope of the trendline. A negative slope indicates a decrease and the more negative, the more severe the decrease. Here, the slope is -0.0225, or, in other words, each year the percentage of Federal Circuit indefiniteness cases that held claims definite decreased by 2.25%. Over the ten year period of the study, that percentage decreased from approximately 82% to approximately 60%. The R squared value here, however, is 0.1475, where 1.0 is a trendline that perfectly overlaps each data point. R squared values should be considered in the context of the study, because some contexts are more predictable than others. Litigation statistics are somewhat unpredictable, so an R squared value this low might still mean that the trendline is a relatively accurate representation of the data points given the field. To serve the most certain value, the accuracy of the trendlines used in this study should be considered relative to other trendlines in this study. Note that all of the graphs in this Article exclude data points that are non-real numbers, such as those that occur when a percentage of zero cases is determined; this adjustment allows trendlines to be plotted and does not decrease the accuracy of the data.
27. "Indefiniteness cases" in tables and charts means those cases that are indexed in 115.1109 of the U.S.P.Q. (BNA).
28. For purposes of this Article, "final" means that the Federal Circuit performed one of the following actions with regard to the claim indefiniteness issue: affirmed a judgment of indefiniteness, affirmed a judgment of definiteness, reversed a judgment of indefiniteness, affirmed a judgment of indefiniteness, affirmed a summary judgment of indefiniteness, or affirmed a summary judgment of definiteness. "Final" does not include cases where, with regard to the claim indefiniteness issue, the Federal Circuit later reheard en banc, reversed or vacated summary judgment of indefiniteness, reversed or vacated summary judgment of definiteness, affirmed a preliminary injunction, or vacated and remanded a judgment of definiteness or indefiniteness.
29. Here, the slope is positive 0.0133, or, in other words, the percentage of final Federal Circuit indefiniteness cases that held claims definite increased from approximately 46% to approximately 59% over the period of study. The R squared value here is 0.0341, meaning the data points varied widely from this trendline.
30. Non-Federal Circuit cases used in this study only include those published in U.S.P.Q. (BNA). U.S.P.Q. (BNA) does not publish all lower-court decisions, as it does with all precedential Federal Circuit decisions. Therefore, the significance of this data is not certain because not only does it not include all cases but it is not likely to be a representative sample. The Supreme Court did not hear any cases on indefiniteness during this period. Other circuits do not hear patent invalidity appeals. This data only includes cases from various district courts, the US Court of Federal Claims, and the Board of Patent Appeals and Interferences (which hears the case before the patent is issued and therefore does not apply the statutory presumption of validity granted only to issued patents).
31. Here, the slope is positive 0.0597, or, in other words, each year the percentage of all non-Federal Circuit indefiniteness cases that held claims definite increased 5.97%. Over the ten year period of study, this percentage increased from approximately 24% to approximately 84%. The R squared value here is 0.2822. As discussed in footnote 32, a perfect R squared value is 1.0. However, R squared values should be considered in the context of the study, because some contexts are more predictable than others. Litigation statistics are somewhat unpredictable, so this R squared value might still mean that the trendline is a relatively accurate representation of the data points given the field. This R squared value of 0.2822 means that, relative to other trendlines in the study, this trendline did not vary widely from the data points, and therefore should be considered reliable.
32. "Neither" here means that the court did not make a determination on the issue of definiteness, usually because some other issue in the case was more dispositive.
33. Subject-areas used in this Article are those defined by the U.S.P.Q. (BNA) for each patent. The U.S.P.Q. also provides sub-subject-areas, and for the cases used in this Article the subject areas included some of the following sub-subject-areas: for biochemical--transformable cells; for chemical--antidepressants, antibiotics, immunoassays, and heart surgery solution; for electrical-- defibrillator, internet processing of credit card transactions, voice recognition technology, and a computer network and user interface; for general and mechanical-- air mattress, feline surgical method, and geosteering wells.
34. John R. Allison and Mark A. Lemley, Empirical Evidence on the Validity of Litigated Patents, 26 AIPLA Q.J. 185, 194, 209, 221 (1998).
35. (From 1989 to 1996, of 239 total Federal Circuit and District Court patent cases involving 299 patents, eight, or 5.8% of invalid patents (139 total) were held invalid on claim indefiniteness grounds. Of 23 cases with claim indefiniteness issues, eight, or 34.8% held the patent invalid. Of biotech patents with claims definiteness issues, one, or 25% was held invalid. Of chemical patents with claims definiteness issues, three, or 9.4% were held invalid. Of computer-related patents with claims definiteness issues, two, or 22.2% were held invalid. Of electrical patents with claims definiteness issues, two, or 7.4% were held invalid. Of general patents with claims definiteness issues, three, or 3.8% were held invalid. Of pharmaceutical patents with claims definiteness issues, zero were held invalid. Of software patents with claims definiteness issues, zero were held invalid.) Note that the cited article uses different standards for its empirical research and thus cannot be accurately compared to the current data.
36. See SmithKline Beecham Corp. v. Apotex Corp., 365 F.3d 1306, 1328 (Fed. Cir. 2004).
37. Datamize LLC v. Plumtree Software Inc., 417 F.3d 1342 (Fed. Cir. 2005).
38. Some cases in the non-final decisions data fell into both means-plus-function and terms categories because multiple claims had indefiniteness issues for different reasons.
39. 514 F.3d 1244, 1249 (Fed. Cir. 2008).
40. 35 U.S.C. § 112.
41. 35 U.S.C § 282.
42. 265 F.3d 1371, 1375 (Fed. Cir. 2001).
43. A. Meaghin Burke, Comment, New Approaches to Pharmaceutical Patent Law: Why Current Patent Jurisprudence is Inappropriate as Applied to the Unique Characteristics of Chemical Compounds, 75 MISS. L.J. 1143, 1150 n.38 (2006).
44. See generally, 35 U.S.C. §§ 112, 282.
45. Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001) (citations omitted).
46. In the current study, the words "insolubly," "insoluble," and other variants were found regularly in term clarity cases.
47. See, e.g., Tech. Patents LLC v. Deutsche Telekom AG, No. 07-3012, 2010 U.S. Dist. LEXIS 88534, at *78-79 (D. Md. Aug. 25, 2010) ("[T]here must be clear and convincing evidence that some insoluble ambiguity exists."); ACQIS LLC v. Appro Int'l, Inc., No. 09-148, 2010 U.S. Dist. LEXIS 77548, at *28 (E.D. Tex. Aug. 2, 2010) ("Defendants have not shown by clear and convincing evidence that the terms. .. are insolubly ambiguous."); Media Queue, LLC v. Netflix, Inc., 672 F. Supp. 2d 1022, 1032 (N.D. Cal. 2009) ("[D]efendants have not provided clear and convincing evidence that the claim terms are insolubly ambiguous."); VDP Patent, LLC v. Welch Allyn Holdings, Inc., 623 F. Supp. 2d 414, 429-30 (S.D.N.Y. 2008) ("They have failed to demonstrate by clear and convincing evidence that the language of the claim is insolubly ambiguous, and their motion must fail.").
48. See, e.g., Aristocrat Technologies Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328(Fed. Cir. 2008).
49. Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester Inc., 336 F.3d 1308 (Fed. Cir. 2003).
50. Cardiac Pacemakers Inc. v. St. Jude Med. Inc., 296 F.3d 1106 (Fed. Cir. 2002).
51. 35 U.S.C. § 112.
52. See e.g., Praxair Inc. v. ATMI Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008); Star Scientific Inc. v. R.J. Reynolds Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008); Microprocessor Enhancement Corp. v. Texas Instruments Inc., 86 U.S.P.Q.2d 1225, 1229-31 (Fed. Cir. 2008); Halliburton Energy Servs., Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
53. See e.g., Halliburton, 514 F.3d at 1249.
54. One alternative explanation for the results is simply that term clarity issues tend not to seriously detract from the ability of a person of skill in the art to understand the meaning of the patent compared to means-plus-function issues or clerical or semantic errors. However, the language that courts use provides evidence that it is the standard of law, rather than the type of claims, that generates the disparate results. Note, for example, language such as: "'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.'" Praxair Inc. v. ATMI Inc., 543 F.3d 1306, 1319 (Fed. Cir. 2008) (quoting Exxon Research and Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)).
55. Net MoneyIN, Inc. v. Verisign, Inc., 545 F.3d 1359, 1365 (Fed. Cir. 2008).
56. Iovate Health Sciences, Inc. v. Bio-Engineered Supplements & Nutrition, Inc., 586 F.3d 1376, 1380 (Fed. Cir. 2009) ("Patents enjoy a presumption of validity, 35 U.S.C. § 282 (2006), and a party seeking to invalidate a patent must overcome this presumption by facts supported by clear and convincing evidence.") (citing Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc., 246 F.3d 1368, 1374 (Fed.Cir.2001)).
57. Intellectual Prop. Dev., Inc. v. UA-Columbia Cablevision of Westchester Inc., 336 F.3d 1308 (Fed. Cir. 2003).
58. 31A C.J.S. Evidence § 191 (2009) (citing Walling v. Cal. Conserving Co., 74 F. Supp. 182 (N.D. Cal. 1945), aff'd, 167 F.2d 905 (9th Cir. 1948)).
59. 35 U.S.C § 282.
60. M.P.E.P. § 2173.02.
61. 35 U.S.C. § 112 ¶ 2.
62. See 35 U.S.C. § 282.
63. Merck & Co., Inc. v. Kessler, 80 F.3d 1543, 1549-50 (Fed. Cir. 1996) ("[T]he broadest of the PATENT AND TRADEMARK OFFICE's rulemaking powers-35 U.S.C. § 6(a)-authorizes the Commissioner to promulgate regulations directed only to 'the conduct of proceedings in the [PATENT AND TRADEMARK OFFICE]'; it does NOT grant the Commissioner the authority to issue substantive rules") (quoting Animal Legal Def. Fund v. Quigg, 932 F.2d 920, 930 (Fed. Cir. 1991)).
64. (Noting that the most recent Supreme Court case on directly on claim indefiniteness was United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942)).