Completing the picture of uncertain patent scope.

AuthorReilly, Greg
  1. INTRODUCTION

    Uncertain patent scope is perhaps the most significant problem facing the patent system. (1) Uncertainty in patent rights leads to avoidable infringement; suppressed competition; inefficient innovation, investment, and licensing decisions; increased business costs; and unnecessary litigation. (2) This uncertainty has long been blamed on the Federal Circuit's rules for interpreting claims, the short summaries at the end of the patent that define the patentee's exclusive rights. (3)

    Near the end of this Term, the Supreme Court tackled uncertain patent scope in Nautilus, Inc. v. Biosig Instruments, Inc., (4) but not by addressing interpretation of patent claims (known as claim construction). Instead, the Supreme Court addressed the standard for determining whether patent claims are invalid as indefinite for failing to "particularly point[] out and distinctly claim[]" the invention. (5) Suddenly, large segments of the patent community blamed uncertain patent scope on the Federal Circuit's lax indefiniteness standard, which only invalidated a claim "when it is not amenable to construction or insolubly ambiguous." (6) Tightening the indefiniteness standard--whether by rendering a claim indefinite when it "is susceptible of more than one reasonable interpretation," as Nautilus and some amici proposed, (7) or only when it is not "reasonably clear" to people working in the field, as other amici proposed (8)--was said to be a panacea that would provide "competitors and the public with clear guidance on what is and is not prohibited." (9)

    The well-established problems with the Federal Circuit's claim construction rules were almost entirely ignored in the materials submitted to the Supreme Court. Rather, the Court was incorrectly told that claim construction has "no bearing on whether the boundaries of the claim itself are definite to a skilled artisan"; (10) that indefiniteness is resolvable without the need for claim construction; (11) and even that claim construction is "a task that courts are well-equipped to undertake using existing law." (12) As a result, the Supreme Court resolved Nautilus with only a partial view of uncertain patent scope, a view that did not include what was widely seen as the source of the problem until the Court granted certiorari in Nautilus.

    In doing so, the Supreme Court held "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," without providing any further guidance as to what constituted "reasonable certainty." (13) Early commentary has been critical of this lack of guidance, with one commentator concluding, "we know very little more about the subject now that we've seen the opinion than we did before." (14)

    This Commentary completes the picture by addressing the intertwined relationship of claim construction, indefiniteness, and uncertain patent scope. Claim construction is a necessary threshold step and, if effective, can resolve uncertainties in claim scope, reducing the need to invalidate claims as indefinite, as discussed in Part II. Part III demonstrates how the Federal Circuit's failed claim construction rules accentuate, rather than resolve, ambiguities in claim scope. Part IV explains how the ineffectiveness of claim construction increases the need for an effective indefiniteness doctrine, but, perversely, both decreased the effectiveness of the Federal Circuit's pre-Nautilus standard and renders any stricter standard too draconian. Part IV proposes that the best way to address uncertain claim scope is to make claim construction more effective, while, surprisingly, largely retaining the Federal Circuit's pre-Nautilus indefiniteness standard.

  2. CLAIM CONSTRUCTION AND INDEFINITENESS

    1. Claim Construction as Threshold Step

      Since "[n]either written words nor the sounds that the written words represent have any inherent meaning," words only acquire meaning from context. (15) In patent law, claim construction is the process of determining meaning from the relevant context, (16) including the rest of the claim language, the written description of the invention in the patent specification, the Patent Office record, and technical texts or expert testimony about the background understanding in the field. (17)

      Context is necessary to determine meaning, even for technically-savvy people reading technical terms. (18) As a result, claim construction does not just occur ex post in litigation to help lay juries, as suggested in the Nautilus briefing. (19) "Claim construction is conducted by all players in the patent system," including the Patent Office, competitors, investors, and researchers. (20) Even in litigation, claims are construed to have "the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention," (21) which is not necessarily understandable to lay people. (22)

      Thus, claim terms cannot be unambiguous on their face without resort to context through claim construction, as proposed by some in Nautilus, (23) To the contrary, the Supreme Court and other courts have consistently evaluated indefiniteness only after looking to context for meaning, i.e., after claim construction. (24) Despite the suggestions in the Nautilus briefing, (25) this does not mean that litigation is necessary to ascertain claim scope. In theory, observers ex ante should be able to "understand what is the scope of the patent owner's rights by obtaining the patent and prosecution history ... and applying established rules of construction" and "be able to rest assured ... that a judge ... will similarly analyze the text of the patent and its associated public record and apply the established rules of construction" to reach the same construction. (26)

    2. Claim Construction's Impact on Patent Uncertainty

      Claim construction is crucial to the certainty of patent scope. As is true of all words, (27) "claims which on first reading--in a vacuum, if you will--appear indefinite may upon a reading of the specification disclosure or prior art teachings become quite definite." (28) For example, a claim may use an unusual word or words in an unusual way or combination, which, in the abstract, would make claim scope uncertain. No uncertainty exists, however, if the specification expressly defines the term (29) or uses it in a way that makes its meaning clear. (30)

      Claim construction's impact on uncertain patent scope depends on how effective its rules are at leading different observers to reach the same conclusion on claim meaning, which in turn depends both on whether the rules for claim construction are well-established and indisputable and whether the substance of those rules is likely to generate a single meaning, rather than a range of possible meanings. (31) The more effective the claim construction rules, the fewer uncertain patents will remain to which indefiniteness could apply. Conversely, the less effective the claim construction rules, more uncertain patents will remain for potential invalidation for indefiniteness.

  3. CLAIM CONSTRUCTION AND UNCERTAIN CLAIM SCOPE

    1. Blaming Claim...

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