Federal Circuit Keeps Burden of Patent Clarity on Applicants on Issues of Patent Indefiniteness

by Foley & Lardner LLP
Contact

In In re Packard, the Federal Circuit affirmed the USPTO Patent Trial and Appeal Board (PTAB) decision upholding the rejection of Packard’s claims for indefiniteness. The per curiam decision approaches the issue from the perspective of the USPTO’s examination function, while steering clear of the issues raised in the Nautilus v. Biosig case pending before the Supreme Court. Judge Plager’s concurring opinion, which is twice as long, traces the history of “indefiniteness” jurisprudence, discusses the difference between pre-grant and post-issuance ”indefiniteness” issues, and acknowledges that the Supreme Court will be weighing in soon in the post-issuance context. Indeed, perhaps the most interesting aspect of this decision is its timing relative to Nautilis v. Biosig.

The Patent Application At Issue

The patent application at issue is Packard’s 12/004,324, directed to a “Coin Change Card.” Independent claim 28 reads as follows:

28. I claim a small, thin, flat plane, rectangular change holding card and wallet/billfold or purse construction with the front top side of the card comprising three raised, straight, parallel, double flanged separators and two raised, straight, parallel, double flanged side edges and a raised side edge end thereby forming four parallel, side by side, flanged coin holding channels or rows of the same length and of different widths, one for quarters, one for dimes, one for nickels, and one for pennies, that are similarly blocked at one side edge by the raised side end edge with the other side of the channel/rows open except for small, fixed, flexible, partially moveable, rubber or plastic retainers that are attached to the topside and ends of the double flanged separators such that coins can be retained on the card and yet slide freely above the surface of the card and obliquely overlap as necessary within the channel/rows between the separators while the bottom, back side of the card is constructed with a wallet, billfold or purse extending from it.

The Indefiniteness Issues

The examiner rejected the claims on a number of grounds, including indefiniteness, and the PTAB affirmed the rejections. Before the Federal Circuit, Mr. Packard argued that the PTAB should not have held the claims indefinite merely because “they ‘contain[ ] words or phrases whose meaning is unclear,’” but should have reversed the rejections because the claims were not “insolubly ambiguous.”

The Per Curiam Decision

The Federal Circuit appeal was heard by Judges O’Malley, Plager and Taranto. The per curiam decision frames the issue as follows:

This case raises an important question: what standard for indefiniteness should the U.S. Patent and Trademark Office (“USPTO”) apply to pre-issuance claims?

and notes that “[t]he parties point to no case in which we previously have addressed this question.”

The court cites the examination function of the USPTO, the importance of testing claims for “reasonable precision,” and the interactive nature of the examination process, and approves a burden-shifting approach to indefiniteness rejections:

It makes good sense, for definiteness and clarity as for other validity requirements, for the USPTO initially to reject claims based on a well-founded prima facie case of lack of clarity (in its several forms) based on the perspective of one of ordinary skill in the art in view of the entire written description and developing prosecution history. Then, if the applicant does not adequately respond to that prima facie case, to confirm that rejection on the substantive basis of having failed to meet the requirements of § 112(b).

The court reasoned that it could reach this conclusion “without regard to the proper formulation of the judicially-applied indefiniteness standard that may be appropriate for post-issuance assessment of indefiniteness, a matter currently under review by the Supreme Court” in Nautilus v. Biosig.

Thus, the court holds:

We conclude that, when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of § 112(b). The satisfactory response by the applicant can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or, in an appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.

Judge Plager’s Concurrence

Judge Plager states in the opening paragraphs of his concurring opinion that he wrote separately to address more directly Mr. Packard’s arguments and the “significant issues” he raised. given the relative timing of this decision and Nautilus v. Biosig, I can’t help but wonder if Judge Plager also wanted to explain his understanding of indefiniteness jurisprudence to the Supreme Court.

Judge Plager reviews Supreme Court and Federal Circuit case law, and finds support for three possible ways to approach claim construction and indefiniteness in issued patents:

(1) Give controlling weight to the policy of upholding the USPTO’s decision to issue a presumptively valid patent, with substantially less concern for the notice function of patents. Thus, find a possible meaning that preserves the validity of the patent claim, without particular regard for what competitors or the public might have understood, i.e., what would be understood by those skilled in the art involved at the time of the invention. (According to Judge Plager, this approach might embrace the “insolubly ambiguous” standard, if such a standard exists.)

(2) Give weight to the notice function of patents, while still recognizing the role of the presumption of validity. Thus, choose from among the available meanings the one that seems to best accord with what one of reasonable skill in the art would understand to be intended, and which the public, including competitors, would assume to be the correct reading. When there is more than one such understanding, as sometimes appears to be the case, this could lead to a preference for the understanding that preserves the validity of the patent claim.

(3) Give full weight to the importance of the notice function of patents, recognizing that it is the claim drafter/patentee who is ultimately responsible for problems created by ambiguous terms. When confronted with a patent claim that has several reasonable meanings for which the patent itself demonstrates no preference (and certainly true of an incoherent term), the result of this option would be a holding that an ambiguous term by definition fails to comply with the statutory requirements for claim drafting. Thus, if a member of the public in order to understand the patent claim must guess about the meaning of an ambiguous term, the claim would not be patentable and is otherwise invalid.

Having found that even the courts have not hewn to a single approach, Judge Plager finds nothing wrong with the USPTO’s even “lower threshold” for indefiniteness rejections applying the following standard articulated in Ex Parte Miyazaki, 89 U.S.P.Q.2d 1207, 1211 (B.P.A.I. 2008):

Namely, if one of ordinary skill in the art, after considering the information provided by the applicant including the written description, and after putting the disputed term in the context of the proposed patent, finds the claim to contain words or phrases whose meaning is unclear, then the examiner is to require the applicant to “more precisely define the metes and bounds of the claimed invention” by issuing an indefiniteness rejection. …. And on appeal to the Board, should the applicant fail or refuse to provide the needed clarification, the Board will apply the same interpretation requirement.

Judge Plager expressed his views that not only is this a permissible approach for the USPTO, it also serves important public policy goals by aiding the USPTO’s role of “ensuring the quality of patents and compliance with the statutory requirements” and addressing “[t]he problem of indefiniteness.”

The Interactive Examination Process

Most applicants address indefiniteness issues before the examiner, by amending the claims or explaining the terminology. It is rare to appeal an indefiniteness rejection to the PTAB, and apparently rarer still to pursue the issue to the Federal Circuit. Still, there are times when an examiner has found claims to be indefinite and the applicant disagrees, or is not able to make acceptable clarifying amendments because no other terminology is supported by the specification. Even if those cases, the Federal Circuit decision here does not appear to break much new ground, because the burden-shifting framework it supports is common to every issue that examiners raise. Examiners make rejections, applicants respond, and the process continues until agreement is reached on allowable claims, the applicant appeals to the PTAB, or the applicant gives up and abandons the application. What is important in this case is the reminder that the USPTO should raise only “well-grounded” indefiniteness rejections and require only “reasonable precision” from the claims.

View This Blog

 

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley & Lardner LLP | Attorney Advertising

Written by:

Foley & Lardner LLP
Contact
more
less

Foley & Lardner LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!