US Supreme Court - Nautilus v. Biosig Instruments - Definiteness Requirement

Because the public must understand the patent claims to determine what requires a license from the patent owner, 35 USC 112, paragraph 2, requires the specification conclude with one or more claims that "particularly point out and distinctly claiming" the subject matter which the applicant regards as the invention. In short, the patent claims must be definite to be valid under 35 USC 112.

In recent years, the Federal Circuit has held a patent claim is definite as long as the claim is "amenable to construction" and not "insolubly ambiguous."

On June 2, 2014, the US Supreme Court held in Nautilus v. Biosig Instruments involving a patent claiming a heart rate monitor used with exercise equipment that "the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the "insolubly ambiguous" standard, we hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."

In short, the US Supreme Court has made it easier to challenge the validity of patent claims for indefiniteness. 

Copyright © 2014 Robert Moll. All rights reserved.

Supreme Court Oral Hearing on Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Today, the U.S. Supreme Court held an oral hearing in Nautilus, Inc. v. Biosig Instruments Inc.

Here's a copy of the written transcript of the oral hearing.

As a reminder, Biosig states the question presented to the Supreme Court is (1) whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and (2) whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.

Nautilus states the question presented is (1) 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, and (2) does the presumption of validity dilute the requirement of particular and distinct patent claiming?

For background: Supreme Court Grants Review of Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

Copyright © 2014 Robert Moll. All rights reserved.

Federal Circuit - Elcommerce.com v. SAP - Evidence Required to Support Indefiniteness, 35 USC 112

In Elcommerce.com v. SAP, the Federal Circuit vacated a district court's holding system claims of US Patent No. 6,947,903, owned by Elcommerce, invalid for indefiniteness under 35 USC 112, because the defendant SAP (1) misinformed the district court the Federal Circuit does not require evidence on the knowledge of the technology by persons of skill in the field; and (2) declined to provide evidence of how such persons would view the description of "structure, materials, or acts" in the specification for performance of the functions recited in means-plus-function elements.

Claim 37 is representative of all of the system claims:

• means for extracting, at each supply chain site, the supply-related data to be monitored, wherein the data is maintained in plural formats located among the supply chain sites, at least one of the supply chain sites corresponding to an independent entity in the supply chain, being independent of another supply chain site;
• means for translating the data to a common format;
• means for uploading and collecting, from each supply chain site, the extracted data to a data collection site;
• means for formatting, at the data collection site, a portion of the collected data, retrieved from at
• least one of the supply chain sites other than the site of the user, into one of a plurality of views, responsive to criteria selected by a user associated with a supply chain site, for presentation to the user, the portion of formatted data being dependent on access rights granted to the user’s supply chain site . . . .

The '903 patent col. 15 ll. 32–48 (emphases added).

SAP argued at the Markman hearing that such "means plus-function terms in the '903 patent do not have supporting 'structure or acts' in the specification, and argued that since such support is absent, SAP could satisfy its burden on indefiniteness without expert testimony or other evidence of the existing knowledge in the field of the invention. SAP urged that Federal Circuit precedent does 'not require' such evidence."

Elcommerce in turn argued "that determination of the adequacy of the supporting structure or acts is made from the viewpoint of persons of skill in the field of the invention, and that evidence of how such persons would view the description should be presented to the court."

During the Markman hearing the district court asked for such evidence:

'THE COURT: Well, what evidence is there of what a person of ordinary skill in the art would understand the structure as defined in the patent to be, what evidence is there of that?

SAP: Your Honor, we haven’t submitted a declaration or separate evidence from somebody of ordinary skill in the art who says, I read the patent and I don’t see any structure. We’re actually not required to do that and, under the case law, the Federal Circuit’s case law, as well as other cases interpreting it, that's not a requirement. We can simply point to the absence of structure and, if it's not there, it's not there."

SAP persisted that the Federal Circuit "does 'not require' evidence of how a person of ordinary skill would understand the patent. The record shows the judge’s concern with this decisional approach to complex technology:

THE COURT: How am I to determine what one of ordinary skill in the art would think?

SAP: Well, your Honor, that’s what I’m here to do is to try to convince you that all those things Mr. Benson pointed to, it’s not structure. He’s simply pointing to phrases in the patent that repeat the function and simply repeating the function and drawing a box around it doesn’t convert it into structure."

This court's inquiry continued at the Markman hearing. "SAP presented only attorney argument concerning the structure and acts set forth in the patent, and Elcommerce stressed that SAP bears the burden of proving invalidity of duly granted claims:

ELCOMMERCE: So, when SAP comes up here, they have to show you that one of ordinary skill in the art would not understand things like the DTE or the DCS or whatever structure we point to, would not be understood by one of ordinary skill in the art to perform the particular function. And they have presented zero evidence about how one of ordinary skill in the art would view what we've shown.

THE COURT: But, how do I determine what is understood by one skilled in the art?

ELCOMMERCE: You’d probably have to get somebody up in the box, that’s the witness box, raise their right hand and testify one way or another. That’s probably, that’s the only way that I know of doing this. To come in and just have a lawyer argue it, is not enough. This is to be determined in view of one of ordinary skill in the art. They have not submitted any declarations of any experts. They haven’t submitted declarations of one of ordinary skill in the art."

The Federal Circuit concluded:

"The district court rightly was concerned about what a person of skill in the art might make of the lengthy written description and flow-charts and the multiple claimed functions. The judge repeatedly asked for evidence of what such a person would understand in this particular setting. Instead of evidence, SAP submitted only attorney argument. The district court accepted SAP’s position that no external evidence was 'required' and could be relied upon to show how a person of ordinary skill would understand the descriptive text and flowcharts and diagrams in the patent. However, the adequacy of a particular description is a case-specific conclusion, not an all-purpose rule of law. Findings as to what is known, what is understood, and what is sufficient, must be based on evidence.

Without evidence, ordinarily neither the district court nor this court can decide whether, for a specific function, the description in the specification is adequate from the viewpoint of a person of ordinary skill in the field of the invention. We do not of course hold that expert testimony will always be needed for every situation; but we do hold that there is no Federal Circuit or other prohibition on such expertise. See Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 (1993). The district court persistently asked for evidence and was given none. Without more SAP cannot overcome the presumption of patent validity.

We conclude that the district court erred in granting summary judgment without a proper evidentiary basis for its conclusion. The burden was on SAP to prove its case, and in the absence of evidence provided by technical experts who meet the Daubert criteria there is a failure of proof. Attorney argument is not evidence. We vacate the district court’s rulings on the system claims, and remand for application of appropriate evidentiary standards and judicial procedures."

Copyright © 2014 Robert Moll. All rights reserved.

Supreme Court Grants Review of Definiteness Requirement of 35 USC 112 in Nautilus v. Biosig Instruments

On January 10, 2014, the U.S. Supreme Court granted a petition for certiorari to review the judgment of the Federal Circuit regarding the definiteness requirement of 35 USC 112(b) in Nautilus, Inc. v. Biosig Instruments, Inc. 

As background this case involves U.S. Patent No. 5,337,753 (the '753 patent), which relates to a heart rate monitor circuit design. The district court held claim 1 invalid for indefiniteness, and the Federal Circuit reversed. 

Claim 1 of the '753 patent recites a heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures, comprising: 

• an elongate member;
• electronic circuitry including a difference amplifier having a first input terminal of a first polarity and a second input terminal of a second polarity opposite to said first polarity; said elongate member comprising a first half and a second half;
• a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other;
• a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other;
• said first and second common electrodes being connected to each other and to a point of common potential;
• said first live electrode being connected to said first terminal of said difference amplifier and said second live electrode being connected to said second terminal of said difference amplifier;
• a display device disposed on said elongate member;
• wherein, said elongate member is held by said user with one hand of the user on said first half contacting said first live electrode and said first common electrode, and with the other hand of the user on said second half contacting said second live electrode and said second common electrode;
• whereby, a first electromyogram signal will be detected between said first live electrode and said first common electrode, and a second electromyogram signal, of substantially equal magnitude and phase to said first electromyogram signal will be detected between said second live electrode and said second common electrode;
• so that, when said first electromyogram signal is applied to said first terminal and said second electromyogram signal is applied to said second terminal, the first and second electromyogram signals will be subtracted from each other to produce a substantially zero electromyogram signal at the output of said difference amplifier;
• and whereby a first electrocardiograph signal will be detected between said first live electrode and said first common electrode and a second electrocardiograph signal, of substantially equal magnitude but of opposite phase to said first electrocardiograph signal will be detected between said second live electrode and said second common electrode;
• so that, when said first electrocardiograph signal is applied to said first terminal and said second electrocardiograph signal is applied to said second terminal, the first and second electrocardiograph signals will be added to each other to produce a non-zero electrocardiograph signal at the output of said difference amplifier;
• means for measuring time intervals between heart pulses on detected electrocardiograph signal;
• means for calculating the heart rate of said user using said measure time intervals;
• said means for calculating being connected to said display device;
• whereby, the heart rate of said user is displayed on said display device (emphasis added).

35 U.S.C. § 112(b) requires a patent claim "particularly point out and distinctly claim the invention" so the public is given notice of the scope of the claim, that is, what can't be done without patent license. The Federal Circuit has stated a claim is definite and valid if it "reasonably apprises one of ordinary skill in the art of the scope of the invention. The Federal Circuit has stated a claim is not indefinite, because it contains words of degree such as "substantially", the parties disagree on claim interpretation, the claim is difficult to interpret, or an error in the claim is correctable in multiple ways. The Federal Circuit has even stated a claim is only indefinite if it is "insolubly ambiguous."

The briefs are lengthy, but in a nutshell Nautilus argued that "spaced relationship" recited in "a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other" and "a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other" made claim 1 indefinite. It also argued that Biosig kept changing the meaning of "spaced relationship" to obtain allowance, avoid invalidity challenges, and prove infringement. Biosig argued that (1) Nautilus misrepresented the prosecution history, (2) one of ordinary skill would be able to measure whether the electrodes were in such a spaced relationship that would substantially eliminated EMG signals when the device was used, and (3) the claim had not undergone multiple metamorphoses.

Biosig states the question presented to the Supreme Court is as follows: whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.

Nautilus states the question presented to the Supreme Court is as follows: 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? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

The SCOTUS blog has the legal briefs and more details at Nautilus, Inc. v. Biosig Instruments, Inc.

I expect the Supreme Court to reformulate a definiteness requirement that is functionally like the standard for resolving ambiguity in contracts, that is, whatever ambiguity exists in the contract will be construed against the drafter. This will reemphasize U.S. patent law should be analyzed consistent with analogous areas of law and the Supreme Court's willingness to limit the Federal Circuit special rules. Whatever happens, I think this case has the potential to impact the value of many U.S. patents.  

Copyright © 2014 Robert Moll. All rights reserved.

Ergo Licensing v. CareFusion - Federal Circuit Finds Means-Plus-Function Claims Invalid Again!

This week Professor Crouch has a graph that confirms that patents with at least one means-plus-function claim (indicated by "means for") have steadily dropped for decades, e.g., from 45% in 1989 to 10% today. It's no wonder since 35 USC 112 will not permit them to be broadly interpreted and recently the Federal Circuit tends to hold them indefinite and invalid. 

The Federal Circuit describes means-plus-function claim in its recent decision: Ergo Licensing v. CareFusion: "Section 112, ¶ 2 requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 (2006). An applicant may express an element of a claim "as a means or step for performing a specified function . . . and such claim shall be construed to cover the corresponding structure . . . described in the specification and equivalents thereof." 35 U.S.C. § 112 ¶ 6. In exchange for the ability to use a generic means expression for a claim limitation, "the applicant must indicate in the specification what structure constitutes the means." Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 948 (Fed. Cir. 2007). Such structure "must be clearly linked or associated with the claimed function." Med. Instrumentation & Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1219 (Fed. Cir. 2003). Failure to specify the corresponding structure in the specification amounts to impermissible pure functional claiming. Id. at 1211. "Although [§ 112 ¶ 6] statutorily provides that one may use means-plus-function language in a claim, one is still subject to the requirement that a claim `particularly point out and distinctly claim' the invention." In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994) (en banc). If an applicant does not disclose structure for a means-plus-function term, the claim is indefinite."

Let's see how this law plays out with respect to the facts in Ergo. There the '412 patent is described as a system to meter and deliver fluids into a patient. Each fluid is metered so different fluids may be delivered at different rates. To meter the fluids, adjusting means are associated with each fluid source to influence the fluid flow for each source. The adjusting means are coupled to a control device, which permits the selective actuation and control of individual fluid flow sources via adjusting means. The control device has data fields that describe the metering of the individual fluid flows. A screen and keypad  can input information into the control device such as the metering rate for each fluid flow source. 

For our discussion claim 1 is representative:

1. Multichannel metering system for metering preselected fluid flows, comprising:

a plurality of individual fluid flow sources;

a plurality of discharge lines, each line of said discharge lines being connected to a corresponding one of said fluid flow sources;

adjusting means associated with said fluid flow sources for acting on said fluid flow sources to influence fluid flow of said fluid flow sources;

programmable control means coupled with said adjusting means for controlling said adjusting means, said programmable control means having data fields describing metering properties of individual fluid flows;

an operating surface connected to said control means;

data input means for input of data into said control means, said data input means being at least partially connected to said operating surface;

data output means for output of data from said control means, said data output means being connected to said operating surface;

selector switch means forming a part of said data input means, said selector switch means including a plurality of selector switches, each selector switch being associated with a set of said fluid flow sources for representing segments of data fields belonging to a corresponding set of fluid flow sources on said operating surface, said each selector switch functionally connecting said data input means with said data fields belonging to said associated set of fluid flow sources.

(emphasis added)

The Federal Circuit focused on the "programmable control means" italicized in claim 1. Ergo, the patent owner, argued the "control device" was a general purpose computer and the corresponding structure for the function recited in the programmable control means in claim 1. The Federal Circuit noted a general purpose computer could not perform the function recited in the programmable means. The Federal Circuit held saying the control device included memory did not help, because memory is not a structure capable of performing the function of controlling the adjustment means. Yet the Federal Circuit noted if the specification recited an algorithm to perform the function, the patent would have satisfied the definiteness requirement of 35 USC 112.

The Federal Circuit stated: "Until recently, we have consistently required "that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor." See Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed. Cir. 2008). "Because general purpose computers can be programmed to perform very different tasks in very different ways, simply disclosing a computer as the structure designated to perform a particular function does not limit the scope of the claim to `the corresponding structure, material, or acts' that perform the function, as required by section 112 paragraph 6." Id. Requiring disclosure of an algorithm properly defines the scope of the claim and prevents pure functional claiming.

In re Katz Interactive Call Processing Patent Litigation identified a narrow exception to the requirement that an algorithm must be disclosed for a general-purpose computer to satisfy the disclosure requirement: when the function "can be achieved by any general purpose computer without special programming." 639 F.3d 1303, 1316 (Fed. Cir. 2011). In In re Katz, we held that "[a]bsent a possible narrower construction" of the terms "processing," "receiving," and "storing," the disclosure of a general-purpose computer was sufficient. Id. We explained that "[i]n substance, claiming `means for processing,' `receiving,' and `storing' may simply claim a general purpose computer, although in means-plus-function terms." Id. at 1316 n.11. In other words, a general-purpose computer is sufficient structure if the function of a term such as "means for processing" requires no more than merely "processing," which any general-purpose computer may do without any special programming. Id. at 1316-17. If special programming is required for a general-purpose computer to perform the corresponding claimed function, then the default rule requiring disclosure of an algorithm applies. It is only in the rare circumstances where any general-purpose computer without any special programming can perform the function that an algorithm need not be disclosed."

Given these difficulties why did means-plus-function claims appear in 45% of the patents roughly two decades ago? I am not sure, but sometimes they correspond to what is invented. Further, they are easy to write. You simply recite "means for" and the function performed. Identifying a structure is not part of claim drafting. Further, it is easy to convert a method claim into a means-plus-function claim.

Despite the ease factor, most companies may want to limit their use in the broadest claim for several reasons. Recently, courts routinely invalidate mean-plus-function claims if it appears the structure is not highly detailed. Courts interpret means-plus-function claims to only cover the exact corresponding structure, i.e., no equivalents are afforded. And as a matter of experience, examiners do not interpret them so narrowly. Instead any means performing the recited function is relevant for raising a prior art rejection. Some may complain that this tendency in examination is unfair. But these problems at least in examination have been known for years. And unlike dissenting Judge Newman and patent blogger Gene Quinn, I don't think this case departs from recent Federal Circuit case law.

Copyright © 2012 Robert Moll. All rights reserved.