Argument recap: Justices seem to coalesce around “skilled artisan” standard for definiteness of patents
on Apr 29, 2014 at 8:15 pm
The Justices started their last week of the Term considering a foundational problem of patent law – how to determine whether a patent is so “indefinite” that it is invalid. Because the basic bargain of patent law is that the inventor discloses an invention to the public in return for a monopoly on the invention (in the form of the patent), it is important that the patent be specific enough to permit others to know exactly what is (and is not) patented.
The issue in Nautilus, Inc. v. Biosig Instruments is whether a patent on a device that allows an exercise machine (like a treadmill) to determine the heart rate of the exerciser is sufficiently “definite” to be upheld as valid. The Federal Circuit, applying a rule under which patents are only rarely found indefinite, upheld this particular patent, and the Court granted review to determine whether it should rein in the Federal Circuit’s rule as unduly generous.
The argument had a strange texture, because of the consensus among all three attorneys (John Vandenberg for Nautilus, Mark Harris for Biosig, and Assistant to the Solicitor General Curtis Gannon, on behalf of the Patent and Trademark Office) on two key points. Specifically, nobody had anything positive to say about the Federal Circuit’s doctrine apparently requiring “insoluble ambiguity” as a premise for indefiniteness. Because this is a standard that seems almost impossible to satisfy, it was easy for Vandenberg (trying to get his client’s patent validated) to criticize it, and neither Harris nor Gannon wished to defend it.
More surprisingly, all three attorneys (and several of the Justices) embraced a standard under which definiteness turns on what a “person having ordinary skill in the art” would understand based on the patent and the specification. Vandenberg could argue that this “skilled artisan” standard would be much more lenient (and that his patent would satisfy it). At the same time, Harris and Gannon argued that this standard is essentially the same as what the Federal Circuit actually does, notwithstanding its “regrettable” references to “insoluble ambiguity; and both also rejected the idea that this standard would make almost all patents invalid.
The point on which the parties disagreed – and thus the intellectual core of the argument – was what I would call the “two reasonable constructions” problem: what happens if a skilled artisan could (or perhaps would) discern two different reasonable constructions of the patent.
Vandenberg maintained, as he had in his brief, that such a patent is necessarily invalid, because it fails to advise others of what has been invented. But he had some rough going in defending that standard. At one point, he suggested that the problem is similar to a statute with two reasonable interpretations. Predictably enough, that triggered an extended discussion with Justice Scalia about what to do with ambiguous statutes. Vandenberg pressed the view that for patents (as for statutes) there can be only one “proper” construction, and that the presence of a second “reasonable” construction invalidates the patent. Justice Scalia found this woefully unrealistic: “We construe statutes all the time, and we certainly don’t think that the result we come to is the only reasonable result. We think it’s the best result, but not the only reasonable one. But you’re saying in this field there’s a right result and everything is unreasonable.”
Similarly unsatisfied, Justice Sotomayor broke in: “I have a really big problem, which is we as Justices disagree on the meaning of things all the time, and one side will say, ‘This is perfectly clear.’ . . . And there will be one or more of us who will come out and say, ‘No, we think it’s a different interpretation.’ Would we have any valid patents in the world if that’s the standard that we adopt?”
On the other side of the aisle, the Chief Justice asked Harris for a discussion of the two-reasonable-constructions problem. When Harris suggested that the patent is not indefinite so long as one of the constructions is better than the other, Justice Scalia suggested that judges will always think one reading is better than the other. But if that is true (and Harris agreed), then, Justice Scalia suggested, patents would always be definite.
Gannon tried his hand at the same problem as soon as his time began. With little success, he pressed the view that the patent is definite so long as one construction is “appreciably” better, and that it otherwise is indefinite. Justice Scalia, for one, found this unsuitably vague: “I think the test you’re giving us is not much of a test; it really isn’t. It seems to me it says so long as there is a right answer, everything else is wrong.” When Gannon again suggested that an “appreciable” difference between constructions would save the patent, Justice Scalia pressed him to explain “[h]ow big is appreciable.” When Gannon explained that “it’s difficult to put a mathematically precise number on it,” Justice Alito joined in: “That’s the whole problem with what you’re saying. I have no idea what ‘appreciable’ means.”
Turning the discussion in a different direction, the Chief Justice suggested that the term “appreciable” might “acquire meaning over time,” like “reasonableness” in tort law. But more to the point he asked whether it was Gannon’s “sense that the Federal Circuit has been applying” the appreciable standard that Gannon pressed.” When Gannon (like Vandenberg and Harris before him) suggested that the references to “insoluble” ambiguity were likely to be “overread,” Justice Scalia retorted “subject to being read, not overread.”
And so, going full circle by the end of the argument, most of the Justices seemed to believe that all three attorneys had accepted the idea that the touchstone for definiteness was the view of the skilled artisan, and that this was quite a bit more forgiving than the “insoluble ambiguity” language of the Federal Circuit’s jurisprudence. So it seems at this point pretty hard to imagine a straight-up affirmance. As Justice Scalia remarked in rejecting Harris’s attempt to suggest that the Federal Circuit’s rule is not all that different: “[I]f that’s what [the Federal Circuit] held we wouldn’t have taken this case. I thought we took it because it had some really extravagant language. . . . I mean it’s one thing to run away from that language, as your brief does. It’s another thing to deny that it exists.”
The real question will be (as Vandenberg emphasized in his rebuttal) whether the Court will apply such a test in the first instance itself. That has been the Court’s practice in other recent patent cases rejecting the Federal Circuit’s formulations of standards. And on that question – the definiteness of this particular patent – the argument sheds very little light. It’s not that the Justices didn’t discuss it. It’s just that their questions suggested little or no inclination in either direction. So I suppose we’ll be waiting for a few months to find out the answer.