Argument preview: Justices to wade into morass about “indefinite” claims in patents
on Apr 17, 2014 at 11:51 am
In the next stage of its continuing quest to reexamine every significant aspect of the Federal Circuit’s doctrinal framework for patents, the Court in Nautilus, Inc. v. Biosig Instruments will consider the proper standard for invalidating a patent claim as “indefinite.”
Background: The case involves a technical solution to a common problem in the exercise-equipment industry. How can you measure the heartbeat of the exerciser without attaching electrodes? The principal difficulty is that the body generates two separate sets of electrical waves, with similar amplitudes: “ECGs,” the waves from the heart, which have the distinctive pattern we’ve all seen on heart monitors; and “EMGs,” which come from muscles. Because the two kinds of waves have similar amplitudes, simply recording the waves from any particular place on the body (such as the hands) will present a mass of noise from which the ECGs cannot easily be discerned.
The Biosig patent before the Court is one of several obtained by the Russian-born Gregory Lekhtman. The patent takes advantage of the oddity that – unlike EMGs — ECGs on the left side of the body have an opposite phase from ECGs on the right side of the body. The patent calls for a bar to be held by both hands (imagine the bar on a jogging treadmill), with electrodes on each end. The device compares the electrical waves from the left hand to those from the right end and subtracts the ones that match, leaving only the ECGs, from whose pattern the device easily can determine the heart rate.
All agree that the patented technology is effective, that Biosig sells exercise machines that implement the patent, and that other exercise manufacturers (but not Nautilus) pay licensing fees to Biosig so that they can sell exercise machines that implement the patent. Nautilus contends that the patent is invalid because it is “indefinite.” That contention relates to specific words in one of the claims in the patent, which involve “common” electrodes that must be placed on each side of the bar in a “spaced relationship” to the “live” electrodes that record the signals discussed above. To simplify a bit, Nautilus claims the patent is reprehensibly indefinite because it does not specify how big the “space” between those electrodes should be in the “spaced relationship.”
The district court agreed with Nautilus and deemed the patent invalid, but the court of appeals unanimously reversed. It applied the standard Federal Circuit doctrine, under which a claim is to be invalidated as indefinite only if it is, in the Federal Circuit’s regrettable phrasing, “insolubly ambiguous.” Judge Schall concurred, offering a different understanding of the patent from that articulated by the panel, but agreeing that the claim was not invalid.
A word about the structure of patents before turning to the parties’ arguments: It is central to the problem before the Court that the typical patent has numerous (and sometimes hundreds of) claims. This means that the well-counseled inventor will include claims at varying levels of specificity. Some claims will be narrow, with specifically defined boundaries that cover the core invention, closely follow the particular implementation of the invention the inventor already has produced, and directly distinguish it from existing inventions. In addition to those claims, which will be at relatively low risk for a definiteness attack, but which will reach relatively few competing products, carefully drafted patents often include claims in steadily expanding concentric circles of imprecision that increase the claimed boundaries of the invention as far as possible. The multiplicity of claims is crucial, because it makes the strategy of drafting ambiguous claims so nearly costless: even if the broad ambiguous claims are rejected, the narrower precise claims will remain in place.
The Arguments: It should be obvious to all (and it certainly will be obvious to the Justices) that any effort to bring verbal precision to the question of “definiteness” is fraught with difficulty, if not entirely futile. This is relevant for present purposes because it makes the task of the individual lawyers in defining, justifying, and defending particular formulations challenging (at best).
Nautilus and Its Amici: Nautilus responds with a stark syllogistic textual argument that (a) “insoluble” ambiguity necessarily tolerates patents subject to multiple reasonable meanings; (b) a claim with multiple reasonable meanings is “ambiguous”; and (c) an ambiguous claim fails to satisfy the statutory requirement that it “poin[t] out and distinctly clai[m]” the invention.
Nautilus’s choice to defend the line between patents for which every “reasonable” person would agree on the meaning and those for which reasonable persons might disagree resonates with the Patent Act’s common reliance on the hypothetical “person having ordinary skill in the art” (often referred to as a PHOSITA). In this particular case, it also offers a powerful argument drawn from the split decision below: if the three judges of the Federal Circuit discerned two distinct, but reasonable, interpretations of the claim, then the claim must by definition be indefinite.
If Nautilus’s textual presentation provides a strong hook for sympathetic Justices, it is the company’s policy arguments that are most powerful. Because the claim defines the boundaries of the monopoly granted by the patent, uncertainty about those boundaries is costly. For one thing, it permits costly litigation against businesses that cannot be sure (or even guess) until the conclusion of litigation whether the claims against them are meritorious. The length of the dispute in this case (ten years and counting) underscores the failure of the existing process.
For another, the existing practice casts a shadow on continuing innovation: if a resourceful inventor wishes to explore technological advances adjacent to the patent, it cannot with any degree of certainty discern whether the devices or processes it creates will infringe the existing patent. Collectively, those effects in fact give inventors an incentive to write claims that are intentionally ambiguous; Nautilus quotes several manuals that directly recommend the use of ambiguous claims and offer strategies for drafting them as broadly as possible.
Nautilus draws strong support for those policy arguments from a set of high-powered amici. Collectively, the briefs present a compelling case that something is wrong with the existing system, and that the most likely candidate for error is the Federal Circuit’s doctrine about indefiniteness. For example, Microsoft – which is both one of the nation’s largest patent-holders and also one of the most frequent defendants in patent litigation – weighs in with a filing emphasizing the unfortunate interaction between a loose standard for definiteness and the mechanics of patent drafting and examination. Specifically, examiners in the Patent and Trademark Office (the “PTO”) can reject patent applications repeatedly on the ground of indefiniteness, permitting multiple amendments until the examiner concludes that all the claims are valid. If that process worked effectively, the examiners readily would reject the broader claims as indefinite or overbroad. But because the inventor knows the invention and related inventions best, it is relatively difficult for the examiner to identify the various strategies for ambiguity that the inventor might be exploiting.
Another noteworthy amicus filing comes from a large group of technology companies headed by Amazon (the list is in alphabetical order), who focus on quantifying the social costs of vague patenting. The most effective part of the brief presents chilling data about the marked increase in the number of patents in force during the last decade, and the rapidly growing volume of litigation brought by patent-assertion entities (entities that hold patents but do not themselves make devices implementing the patent).
“Compromise” Amici: Yahoo! files an amicus brief in support of reversal (but pointedly not in support of Nautilus), arguing that Nautilus’s standard is just as problematic as the Federal Circuit’s standard because it goes to the opposite extreme, by articulating a standard that would invalidate almost any patent. Given the inherent imprecision of language, almost any claim is subject, on its face at least, to multiple reasonable interpretations. The “zero-tolerance-for-ambiguity” standard that Nautilus articulates is an easy target for criticism. Yahoo! urges reversal because the Federal Circuit’s “intolerable ambiguity” standard is far too lax; under that view the court of appeals should take a second look at the case, applying the more rigorous PHOSITA standard Yahoo! articulates.
The most interesting thing about the Yahoo! standard is that it is almost identical to the standard that the federal government articulates in its brief, filed in support of Biosig and thus urging affirmance. The government suggests that the phrase is “susceptible to possible misapplication” by district courts, and even goes so far as to accept Nautilus’s argument that it “may encourage patent drafters to exploit potential ambiguities rather than to cure them.” And yet, the government urges affirmance, based on its view that the record establishes that a PHOSITA in fact could understand the claim; it points in particular to an affidavit asserting that a PHOSITA managed to construct a working device using the information in the specification in just a few hours.
Respondent: Respondent Biosig stakes out a position that seems to be a bit farther out in the spectrum; the need to seek affirmance all but requires it to justify the Federal Circuit’s analysis as so close to correct that there is no need for a remand. Thus, Biosig argues that references to “insoluble” ambiguity in Federal Circuit opinions are effectively snippets that obscure the actual test the Federal Circuit applies. On that point, Biosig presses a standard difficult to distinguish from the PHOSITA standard that Yahoo! and the federal government urge. At some places, it emphasizes the PHOSITA reading (and the evidence discussed above), but at others it seems to suggest that almost any patent is capable of being construed, and it thus suggests a standard under which indefiniteness attacks would rarely be successful; the discussion resembles the rarely applied doctrine permitting a court to hold a contract invalid for indefiniteness.
Biosig is on stronger ground with its attacks on the “no ambiguity” rule that Nautilus articulates. Biosig contends that this rule is directly inconsistent with the large mass of the Court’s cases on claims construction, in which the Justices regularly have applied interpretive tools to resolve close questions of construction. Almost by definition, those cases involved claims susceptible to multiple reasonable readings, or they would not have troubled the Court. Rebutting Nautilus’s claim that “there must be two reasonable readings if the judges couldn’t agree below,” Biosig can point out that Justices often have dissented from claims construction opinions, which proves that a claim can be enforced despite multiple constructions persuasive to individual jurists.
Biosig also points to the doctrine of “equivalents,” a longstanding judicially created patent doctrine that allows enforcement of patents not only against devices that fall within the literal boundary of the claims, but also (in rare cases) against inventions that fall outside the literal boundary of the claims, when the devices in question can be called “equivalent” to the claimed invention. That rule shows the Court’s longstanding concern that an inventor receive the benefit of the entire invention, even if he could not describe it in the specific language of a particular claim.
Conclusion: The argument in this case well might resemble last month’s argument in Alice Corp. v. CLS Bank International, in which the Justices struggled mightily to come up with verbal formulations adequate to serve the relevant policies, but spent little or no time considering how those formulations might apply to the patent at issue. Here, the Justices are likely to be motivated to rein in the Federal Circuit’s arguably toothless definiteness standard; the ability of drafters to offer so many claims makes it difficult to doubt the incentive under existing doctrine to draft claims vaguely. At the same time, the Justices surely will want to stake out something that doesn’t too easily invalidate a large mass of important patents. I would predict an argument in which the Justices press all of those arguing hard to pin down and justify the particular boundaries they want to draw.