*1 1307 States, on who related to 378 silent bears the cost Motor F.3d Co. United (Fed.Cir.2004). DuPont, production disposal avgas-related of In we held parties byproducts indicates in- agreement “to hold that the Government’s by tended the borne cost to be Oil loss, any ex- against harmless [DuPont] Companies. any ... kind pense damage ... or of ” sufficient include whatsoever was to Indeed, in plaintiffs this case are (em- F.3d at liability. CERCLA sophisticated “surely companies would added). Co., In Ford Motor phasis we know how to draft [negotiate and] broad liability that CERCLA was similarly held clauses hold harmless indemnification ex- provision requiring a reim- covered tending perpetuity if that were their costs,” of all “allowable includ- bursement intent,” during even wartime. Shell Re- damage ing or destruction “loss Decision, mand at 425. Fed.Cl. Our out of or in property may as arise connec- in DuPont and previous decisions Ford tion work performance with the provide of this very Motor Co. evidence under at 1319 this contract.” F.3d Companies’ opportunity fact. The Oil best added). (emphasis provision No such ex- clean-up to recover costs from the their ists in this case. the CERCLA through Government was California, should litigation not Yet, majority’s analysis entire rests by fitting now allowed to recover a that a term requiring on the conclusion peg majori- square into a round hole. payment “charges” or “costs” is suffi- ty straightforward errs interpreting require cient broad indemnification. “Taxes” a catch-all indemnifica- clause as Maj. But the clause Op. at 1294. “Taxes” Therefore, provision. tion I must dissent. concepts indicating lacks any reference parties intended enter into a indemnity provision; broad terms like
“loss,” “destruction,” “damage,” “liability,” harmless,” “injury”
“indemnify,” “hold Although
are to be found. I nowhere majority that
agree “special give required
words” are effect to id., indemnification,
promise of that does can
not that the contract be devoid mean any objective parties’ indicia of the in- generally liability
tent to allocate between Oxnard, See, City
them. F.2d e.g., view, my avgas at 347. contracts In re PACKARD. Thomas G. lack of such intent. any evidence 2013-1204. No. case, If history purpose serves a this Appeals, United Court of States 1940s, today,
it is to show that in the Federal Circuit. avgas production byproducts, results some are wastes. Waste created of which 6,May petrochemicals repre- production case producer, sents a cost on the
the Oil That the contracts are Companies. *2 Tompros,
Louis W. Wilmer Pick- Cutler Dorr, ering LLP, Boston, Hale and Massachusetts, argued appellant. With him on the brief were Proshanto Mukherji Looby. Caitlin R. Kelley, K. Deputy Nathan General Property Counsel for Intellectual Law and Solicitor, United States Patent and Trade- Office, Alexandria, mark ar- Virginia, gued appellee. him the With brief L.R. B. Stacy were Sawert and Mar- Kristi golies, Associate Solicitors. Of counsel Lamarca, Attorney, was William United Office, States Patent Trademark Alexandria, Virginia. PLAGER, O’MALLEY,
Before
TARANTO, Judges. Circuit filed
Concurring opinion Circuit
Judge PLAGER.
PER CURIAM. important question: case raises an
This indefiniteness should for
what standard Trademark Office Patent and
(“USPTO”) claims? apply pre-issuance no case in which we parties point to
The question. this
previously have addressed Appeal Trial and Board
The Patent
(“Board”) applied-for Packard’s held Mr. indefinite, not and therefore
patent claims statutory drafting compliance 112(b), § which of 35
requirements U.S.C. conclude specification that the with
provide pointing particularly more claims
“one or subject distinctly claiming” the
out and Packard, the invention.1 Mr. on
matter of court, the Board insists that
appeal to this the standard of indefiniteness misapplied a frontal view of the Figure shows grounds indefinite on by finding his claims Figure 2 shows a cross-section of card and phrases words or “contain[] the card. J.A. 37. 14. meaning is unclear.” J.A. He whose that, the Board believes had rejected Mr. Packard’s The examiner ambiguous” standard his “insolubly lack application grounds: on three original claims, would not have been those claims in- description, claim adequate written held indefinite. definiteness, 145- and obviousness. J.A. explain, we the reasons we shall For Mr. Packard Following rejection, 47. rejection of Mr. Pack- affirm the Board’s original claims and all of his cancelled claims. ard’s numbered a new set of claims substituted through 37. J.A. 95-99. Background appeal in this covers application The in this through 37 are at issue Claims 28 coin J.A. 24. The change coin holder. claims 29 and 34 are appeal, of which that has four plastic is a thin card holder representative: surface for channels on its front different small, thin, plane, flat I claim a 28. coins, as shown storing types different card and change holding rectangular figures reproduced below. in the with purse construction J.A. wallet/billfold 112(b). § of cur- designated For the benefit prior to the patent in this case was filed 1. The 4(c) readers, September adopted date current 2012 effective we have rent Leahy-Smith Invents Act America part designation text in relevant as the 112-29, ("AIA”), replaces which Pub.L. No. unchanged. newly U.S.C. 112 with paragraph 2 of 35 flat top comprising the front side of card surface of card and can also raised, straight, obliquely partially overlapping. stored parallel, double three raised, flanged separators two J.A. 95-98. flanged double straight, parallel, side examiner, rejection, his final edges edge side end and raised there- again pending found claims invalid side, by forming parallel, four side grounds: the same three claims 28-33 flanged holding coin channels or rows of description, 37 for lack of written widths, length the same different indefiniteness, 28-37 for 28-37 and claims dimes, quarters, one for one one for J.A. 108-14. Regarding obviousness. nickels, pennies, and one for that are description, written the examiner noted similarly at one side edge by blocked required change while the claims *4 edge raised side end with the other side wallet, holding card to attached to a open except of the channel/rows supported by this feature was not the writ- flexible, small, fixed, moveable, partially description. Regarding ten J.A. 109. in- plastic rubber or retainers that are at- definiteness, examiner pointed the out tached to the and topside ends of the limitations several claim failed to the meet separators flanged double such that 112(b) requirements of 35 U.S.C. be- coins can be on the retained card and cause or lacked antecedent basis yet freely slide the above surface of the were otherwise unclear. J.A. 109-10. overlap card and obliquely necessary as appealed Mr. Packard the examiner’s within the between the channel/rows Board, rejection final the af- which separators bottom, while the back side firmed the written description examiner’s wallet, of the card is constructed with a rejections, and indefiniteness while revers- purse extending billfold or from it. ing rejection. the 7-19. obviousness J.A. 29. change holding wallet, card In affirming the course of the examiner’s billfold, 28, purse of claim wherein the rejection, the indefiniteness Board change is holding card constructed as the review set forth in the Manu- billfold, part wallet, purse of the or and al Examining of Patent Procedure affixed to a and surface contained within (“MPEP”) 2173.05(e), namely, claim “[a] wallet, purse. the billfold or it indefinite when contains words phrases meaning whose is unclear.” J.A. I claim a thin uniformly small flat rehearing, 14. On the Board declined plane rectangular holding coin card modify its J.A. decision. 2-5. Comprising edge retainers, side a retainer, closed side small in- appeals Mr. Packard deci- Board’s clined/sloped protrusions, end multiple response sion. its Mr. Packard’s parallel, straight raised and double opening appeal, brief fo- on USPTO flanged separators, small channel/row issue, noting cused on the indefiniteness flexible protruding top retainers on the that, issue, if we affirm the Board on that side ends of the separators, channel/row claims, adequa- which applies to all the all arranged of which are on the upper cy description, applicable written surface of the such that a card various claims, only some of becomes a moot denomination of coins can be held and suggestion issue. We the USPTO’s accept retained on within respective the card a that we first the claim indeflnite- address slide freely and can within ness issue it relates to all of the channel/row because flanges slightly necessarily double implicates above the claims and it explain, For reasons we written de- shall content question scription. we believe the case can be before us addressing resolved without the broad is are re Actions of the USPTO sues Mr. Packard. conclude raised We with the re by us accordance viewed initially when the issued USPTO Proce of the Administrative quirements well-grounded rejection a identifies seq.; § 701 et see Act. 5 U.S.C. dure ways language — in a is am which U.S.-, Hyatt, Kappos v. S.Ct. incoherent, biguous, oth vague, opaque, or (2012) 1694, 1690, (citing 182 L.Ed.2d describing defining erwise unclear Zurko, 150, 152, v. Dickinson (1999)). invention, and the claimed thereafter L.Ed.2d 143 119 S.Ct. law, interpreted Questions ap- applicant provide satisfactory as fails to given plenary agency, are plied response, reject can properly the USPTO Eshhar, appeal. Capon review failing the claim to meet (Fed.Cir.2005). 1349, 1351 Indefi- F.3d 112(b). requirements §of The satisfacto niteness, as a of claim construc- subset ry response applicant by the can take the tion, of law which this court form a modification without Kinetic Con- reviews deference. unclear, a separate identified as definition Inc., Sky Grp., Inc. v. Med. cepts, Blue or, language, appropri in an unclear (Fed.Cir.2009). *5 554 F.3d 1022 case, explanation ate a for the persuasive jurisdiction this appeal over We record of is not why at issue 1295(a). § to 28 pursuant U.S.C. us, actually On the before unclear. facts uphold rejection this to holding suffices
Discussion here. occurred 1. 2. appeal his
Petitioner Packard casts
First,
grounds.
he contends that
broad
grounds
this
from
holding
derive
by this court
applied
the standard
for de-
a
of the USPTO’s examination
combination
of a
in a
termining indefiniteness
term
§
and
seq.
function
35 U.S.C.
et
under
131
112(b) governed
§
under 35
is
U.S.C.
the substantive standard
35 U.S.C.
ambiguous.”
by
phrase “insolubly
Un-
112(b).
assigned
§
Congress
to the USP-
us,
standard,
tells
claim is not
der this
he
applica-
to
responsibility
TO the
examine
any
give
meaning
if a court can
indefinite
the statu-
compliance
tions to
with
ensure
context
disputed
term in the
tory
patent.
issuance of a
criteria for
claim.
USPTO,
appli-
In the
an
U.S.C.
131.
Second, Mr.
contends that the
Packard
be,
is,
supposed
is
to
ex-
cant’s “claim or
“insolubly
standard
ambiguous”
amined, scrutinized, limited,
made to
and
for indefiniteness is mandated not
court
Key-
he is
to.”
conform to what
entitled
only
deciding
for our use in
cases in which
Co., 95
stone
Co. v. Phoenix Iron
Bridge
already
being
has
issued and
(1877).
274, 278,
1313
See of the role that
the USPTO can
in
Supreme
play
review
Court.
under
Instruments,
Nautilus, Inc.,
ensuring
patent
Inc. v.
claims are clear and
Biosig
(Fed.Cir.2013),
grant
cert.
in
unambiguous.
example,
gia-Pacific Corp. Corp., v. U.S. (2d Cir.1958) (“[Pjatent-
258 F.2d always cannot be described able inventions applicant Given the role of the *7 measurements, symbols in terms of exact implementa it is a reasonable process, formulae, and and the necessari- applicant as responsibility, tion of the examination ly meager by must use the tools provided USPTO, 112(b), § upon to for the applied language, admittedly tools which lack exac- providing applicant well-grounded claims, If in precision. titude and read clarity problems, to de identification light specifications, reasonably of the pain persuasive responses on of re mand in the art apprise those skilled both case, jection. approach That decides this invention, and scope utilization and Mr. Packard did not offer a satis because subject precise if the is as indefi factory response well-grounded can demand no permits, matter the courts rejections ex niteness this case. The more.”). here, having ample grounds, set aminer variety ways in which he found forth a USPTO, an examining applica- confusing, some tion, imprecise the claims for rea- obliged is to test the claims understandable, consider not even according princi- to these times precision sonable description. ing light them of the written ples. recognized importance We (June 2010); J.A. 146-47 or See J.A. 109-12 incoherencies within them. Because (Feb.2011); 2011); (July 172-73 J.A. J.A. Mr. Packard an opportunity bring had (Feb.2012); also the more detailed see clarity to claim language, his we affirm the Judge Plager’s con- factual discussion findings Board’s as to indefiniteness under curring opinion. the MPEP properly applied by standard USPTO, the standard which we have respond adequately not Mr. Packard did approved. here group language problems. to this of claim others, ignored entirely. He some As to our judgment upholding view of explanations he offered brief of what he Board’s applied-for determination that the thought certain material the written de- patent claims are invalid failure to scription figures showed. But he did 112(b), comply requirements with the difficulties, claim-language not focus on the requirement “particularly that a claim propose clarifying changes nor did he or point[ distinctly out and ] claim[ the sub- ] why, scrutiny, on existing show close ...,” ject matter we need not address the really claim language reasonably was as problems further issue of the with the precise permitted. as the circumstances 112(a).3 written description under (Nov.2010); (May See J.A. 126 J.A. 151 2011); (Nov.2011); J.A. 190-193 J.A. 244 Conclusion (Sept.2012). We affirm the Board’s decision on indef- The Board relied on this failure of re- initeness and approve applica- the Board’s sponse to the well-grounded examiner’s re- tion of the on which it is based. jections in affirming on the merits the AFFIRMED rejection. examiner’s final The Board re- agreed viewed and with the examiner’s PLAGER, Judge, Circuit concurring. identification of the prob- indefiniteness join I per curiam opinion of the lems that constituted Mr. Packard’s failure court, fully support the conclusion adequately comply stated therein. per While the curiam requirements 112(b), §of and for which opinion right and, reaches the result as far satisfactory there had response been goes, reasons, as it right it decides from Mr. Packard. J.A. 14-16. On recon- grounds the case on argued by not either sideration, the Board stood its affir- party. rejection, mance of the noting the crucial I separately write because I am of the distinction between what Mr. Packard ar- petitioner view that a gued seeking this court required what is address problem: indefiniteness reversal of a decision Mr. Packard’s “ar- is entitled to an guments focus on what is explanation why contained in the arguments disclosure, whereas the indefiniteness to which he relied appeal for his did not 112(b) which [§ ] the lan- prevail. I also significant believe that the guage of the claims.” J.A. 5. issues raised Mr. Packard deserve to be *8 directly. addressed
In some it enough cases is difficult As the per opinion for curiam explained, courts to construe the claims when the Board, draftsperson applying has every understanding made effort to be its concise, clear and let alone when USPTO standard clarity the in claim draft- readily MPEP, observable ambiguities ing contained in the held Mr. 2, paragraph 3. to paragraph plained Similar previously, adopted 1 of 35 we have the cur- replaced § newly desig- U.S.C. 112 was with designators. rent 112(a) 4(c) AIA; § by nated as ex- have to patent claims indefi- cable we would decide the correct- applied-for Packard’s ness of the phrases regarding words or Board’s conclusion they “contain!] nite — effect, applicant’s patent indefiniteness of the this meaning whose is unclear.” worse, suspense claims. For better or the they finding by the USPTO was regarding part gone— of the case is compliance were not per opinion curiam has announced who particularly “claims requirement wins; help explain the outcome I will distinctly the sub- point[ claim[ ] out and ] only add at the end some additional salient ject matter the invention.” 35 U.S.C. [of] facts to those contained in the per curiam 112(b).1 opinion. Packard, court, appeal to this Mr. is the proper insists that the standard A. standard, “insolubly ambiguous” which he Addressing arguments pressed then the invariably applied by this court
believes is Packard, judicial- Mr. I turn first to the challenges to claim construction involv- ly crafted law—both of this court and the terms, of and not the ing indefiniteness Supreme regarding the standard Court — case different standard his clarity patent. of claims an issued the Board. He believes had the 1853, addressing As far back as when advocates, applied the standard he Board requirement patents, definiteness of indefi- his claims would not have been held Supreme emphasized overriding Court nite. un- policy considerations that claims must appeal To decide Mr. Packard’s on the any ambiguously define invention over the presents requires terms he an examination art, prior provide public. notice to the court’s ‘indefiniteness’ standard as this Fiske, See Brooks v. 15 How. applied by well the one the Board. If (1853). 212, 14 require- L.Ed. 665 The differ they significant ways, a determi- specificity ment of claim was central “so propriety, made as a nation must be public may they that the know what are law, the Board’s choice of matter of prohibited doing [during from the term of standard. patent] are to have at what important point I note at the outset an term, the end of the as consideration for judicial process. Supreme Court grant.” Id. at 214-15. The Court recently agreed to address the emphasized paten- Brooks also that “[t]he apply standard for this court to proper distinctly it ought tee to state what is for raising the court an coming cases before which he claims and describe issue, including ‘indefiniteness’ the role of warning ... purpose limits for the “insolubly ambiguous” person, using other purchaser, innocent Fortunately, it is jurisprudence. machine, court’s Id. infringement....” of his fully in Mr. possible explore the issues at 215. transgressing appeal Packard’s without emphasis by Supreme This Court
upon
Supreme
territory
Court’s
—more
has remained consistent over the last cen-
on this later.
tury
Supreme
a half.2 The
Court’s
appeal,
the merits of the
once we most recent case to date on indefiniteness
On
clarity
appli-
conclude what standard of review is
and claim
is United Carbon Co.
See,
Dunbar,
47, 52,
e.g.,
per
opinion,
White v.
119 U.S.
1. As we did in the
curiam
since
(1886) (reiterating
not
S.Ct.
Binney
Smith
&
(1942).3
clarity
precise
on the
lan-
165,
Here the
claim
focused
232
87 L.Ed.
S.Ct.
claim,
of
and related to a theo-
guage
that:
wrote
Supreme Court
pat-
in the art —the
person
retical
of skill
particular-
of
statutory requirement
man—
ent law version of the reasonable
only
met
in claims is
ity and distinctness
person
and how that
would understand the
clearly distinguish what
is
when
language.
claim
went before
claimed from what
clearly
circumscribe what
to
art and
The statute referred
United
(1932),
§
A
enterprise.
from future
Carbon case was 35 U.S.C.
foreclosed
112(b).
§
uncertainty
today’s
and
That sec
enterprise
predecessor
of
which
zone
language
almost identical
only
enter
at the
tion included
experimentation
applicant
requirement
the current
infringement
of
claims would dis-
risk
—the
patent
particularly point
a
“shall
out and
only a little less than
courage invention
distinctly
part, improvement,
claim the
foreclosure of the field.
unequivocal
he claims as his inven
Moreover,
combination which
claims
reason-
must be
§
discovery.” 35 U.S.C. 33.5 Even
tion or
ably clear-cut to enable courts to deter-
1932,
before
the Act of 1836 had similar
novelty and invention are
mine whether
language, stating
patent
claims “shall
vagueness
of
genuine.... Whether
particularly specify
point
part,
out the
language
the claim has its source in the
improvement, or combination which he
employed or in the somewhat indetermi-
discovery.”
claims as his own invention or
claimed to
nate character of the advance
Co.,
350, 354,
See Miller v. Brass
104 U.S.
art
materi-
have been made
is not
(1882). Thus,
throughout
ambiguous.” See
of
Invalidations
and the
for Indefiniteness
Holders,
Implications
Patent
75 Pat.
in
may
Exxon
Whatever the court
(BNA)
Trademark &
J.
Copyright
456
“insolubly ambiguous”
by the
intended
(2008).
noted, however,
study
The
is not
phrase,
Packard
alone
his
Mr.
there
increase in
sharp
was
invalidations
what it
employment of it and
seemed
Datamize,
after 2005 and
issuance of
of later
mean. A
cases in this
number
Inc.,
Software,
LLC v. Plumtree
417 F.3d
dealing
court
with indefiniteness issues re-
(Fed.Cir.2005).
1342, 1347
Id.
version of the
cited both the traditional
court
Datamize the
cited to the Exx-
test was what one of
doctrine —that
“insolubly ambiguous” language,
but
art would
ordinary skill in the
understand
objective
then added that
“[s]ome
mean,
the claim
limitation
some vari- must
provided
be
order to allow the
ant of that
then at some
—and
public to
of
scope
determine
point
Exxon
employed the
notion of “inso-
invention,”
1350;
claimed
id. at
conse-
lubly ambiguous”
claims need
quently
phrase
the court held the
“aesthet-
—that
construction,
be amenable to
however diffi-
ically
fatally
pleasing”
ambiguous.
417
The
may
cult
task
F.3d at 1356.
author of the
for a court that
be. Given
dis-
trict
study
court
reads this addition as
affairs, it
this state of
should come as no
standard,
undercutting
and,
the Exxon
ac-
not
surprise
always
that it
clear
was
which
cording to
study,
indefiniteness invali-
test,
factors,
version of the
or what other
dations in the
courts
nearly
district
rose
dictated
actually have
the result
percent
the 30 months following
some of these cases.7
Datamize,
compared
pre-
the 30 months
I
For
note that
completeness,
per-
(The
ceding it.8
other
study
case the
ceived
in this court’s articula-
differences
thought significant,
Energy
Halliburton
tion of the indefiniteness standard is said Servs.,
LLC,
Inc. M-I
F.3d 1244
to have had an
on the
effect
behavior of
(Fed.Cir.2008), affirmed a district court’s
the trial
well.
In a study
courts as
of holding
“fragile gel”
fatally
was
am-
years
district
standard.)
court cases in the
biguous,
immediate-
citing the Datamize
ly
(2001-2005),
following Exxon
the author
Thus,
the “insolubly ambigu-
over time
study
during
stated that
years
those
phrase
ous”
alleges
Mr. Packard
“district
sparingly
pat-
courts
invalidated
the only correct
test
indefiniteness has
ents for lack of definiteness.” See David taken on a
own.
generat-
life of its
It has
Kelley,
A.
controversy,9
In the
ed
Wake Datamize and
considerable
and has now
Laser,
9.See,
Crouch,
e.g,,
“Insolubly
7. See Christa J.
A Definite Claim on
Dennis
Is
Am-
Empirical Study
Claim
An
Indefiniteness:
biguous" the
Standard
Correct
Indefinite-
Definiteness Cases
the Past Decade
with a
ness?,
21, 2013),
(Sept.
http://
PATENTLY-0
Focus on the Federal Circuit and the Insolu-
patentlyo.com/patenl/2013/09/isinsolubly
Standard,
bly Ambiguous
10 Chi.-Kent J. In-
ambiguous-the-correct-standard-for-
2010)
(Fall
("These
Prop.
tel!.
differ-
indefiniteness.html;
Comm’n,
Federal Trade
[among
analyzed] partially
ences
the cases
Evolving Marketplace: Aligning
IP
Patent
result
incorporating
from the Federal Circuit
Competition,
with
Notice and Remedies
94-
evidentiary
'insolubly
burden into the
am-
(March 2011), http://www.ftc.gov/reports/
biguous’
inconsistently applying
standard and
evolving-ip-marketplacealigning-patent-
standard.").
'insolubly ambiguous’
notice-remedies-competition; David A. Loew-
Shuman,
Clyde
enstein and
United States:
Kelley,
8. See also David A.
In-
Indefiniteness
“Insolubly Ambiguous’’
The Federal Circuit’s
Sharply
validations Continue to Rise
(BNA) 576,
Indefiniteness,
Copyright
Standard
77 Pat.
Trademark &
J.
Mondaq
Business
Briefing
(2009).
26, 2008),
(Nov.
http://www.mondaq.
the issue of what
law for the Board to apply
proposed
led to this case which
deter-
might
argued
mean is
claims under USPTO review.
phrase
appellant’s patent rights.
minative
B.
recently
petition
it has led to a
And most
further,
proceeding
Before
there are
Court, that the
Supreme
Court
*12
questions
definitional
require
some
granted,
challenges
the funda-
now
clarification.
far I
So
have used the term
validity
“insolubly ambigu-
mental
“indefiniteness”
shorthand for the com-
ous” standard.10
plex of issues surrounding
require-
particular importance
Of
discus-
drafting
ments for clear
in
It
patents.
case,
sion and to the outcome
among patent practitioners,
custom
though
argument
Mr. Packard’s
is to the
well,
and the courts as
to refer to some-
contrary,
purposes
deciding
this case
thing
general-
called “indefiniteness” as a
necessary
it is not
to determine whether
drafting
ized
recognized,
error
when
employed by
the traditional test
courts for
will invalidate a patent,
patent
or a
claim
determining
has or has not
indefiniteness
However,
in particular.
the term “indefi-
superseded by
been modified or
Exxon’s
(or
variants)
grammatical
niteness”
its
“insolubly
it
ambiguous” phrase. Nor is
subsumes several different and distinct is-
necessary, assuming “insolubly
therefore
require separate analysis.
sues that
ambiguous”
from
differs
the traditional
test,
First,
test
a
as a
legal terminology
to address whether
matter of
is,
law,
permissible reading
statutory
of the
re-
statutory
there
under current
quirement
“particularly point[
requirement,
that claims
reference to a definiteness
]
distinctly
subject
statutory
mat-
provision
claim[ ]
out and
nor a
that invalidates a
noted,
patent
patent
ter” of the invention. As
the Su-
or a
claim for “indefinite-
has decided that
it is the
preme
require-
Court
ness.”
relevant
found,
noted,
proper
questions,
forum for those
and it ments are
as earlier
in sec-
inappropriate
would be
at this time for a
tion 112 of the Patent Act. This section is
(a)
opinion.
“Specification.”
them in an
lower court to address
entitled
Subsection
specification
section
states that “the
Fortunately,
go
I need not
there in or-
description
contain a written
shall
judge
arguments.
der to
Mr. Packard’s
invention,”
specific
and sets out
criteria
because, having
This is
now identified
judging
adequacy
its
must be set out
—it
arguably controlling
ap-
these two
tests
”
“full, clear, concise, and exact terms....
by this court to cases on review from
plied
(2011).
112(a)
§
35 U.S.C.
courts,
enough
it will
the district
(b)
tests,
noted,
previously
that both of
show
whatever their
As
subsection
be,
scope
Specification
respects
provides
differ material
shall
“particu-
from the test
to Mr. Packard’s
conclude with one or more claims
then,
larly
distinctly claiming
claims
the Board. And
it will be
out and
pointing
only necessary
subject
which
inventor ...
to decide whether
USP-
matter
test,
materially
regards
it
invention.”
though
TO
even
differs
as the
U.S.C.
112(b) (2011).
ours,
Thus,
written de-
permissible
from
is a
one under the
Instmments,
Nautilus, Inc.,
10. Biosig
+ Federal
Inc. v.
com/unitedstates/x/70266/Patenl/The
Insolubly+Ambiguous
(Fed.Cir.2013),
+ Circuits +
+
granted,
An incoherent term preserves validity means there is patent reasonably claim, meaning particular understandable without regard for what the term in appears. the context in which it competitors public might or the un- correctly, derstood, i.e., More it means that one of ordi- what would be understood nary skill in the art any cannot ascertain those art skilled involved at the meaning reasonable of the term as used. time of the invention.12 patent litigation labeling disput- of a Since construction is a matter of ed claim term as “incoherent” is given law with no formal deference to the rarely seen. Tech, judge (Cybor Corp. trial v. FAS term, Inc.,
An ambiguous
hand,
(Fed.Cir.1998)) (en
on the other
11. With
requirements governing
the casual use
both the "written de-
by practitioners,
including
scription”
counsel
in this
and the "claims.” The late hon-
case,
Rich,
"specification”
Judge
when what is meant is
ored and beloved
Giles
one of the
Act,
actually
description”
principal
the "written
is incor-
architects of the 1952 Patent
rect, though widely
profession's
practiced.
statutory
decried the
constant misuse of
"specification”
term
these terms.
includes both the written
description and the claims. The use of the
"specification”
broader term
when what
("While
Phillips,
12. But see
sume to be correct When C. more than one such understand- there is The discussion thus far has focused on case, ing, appears as sometimes to be the of this court’s standard for a preference this could lead to for the review of compliance understanding preserves validity requirement they appear for claims as claim.13 patents, post-issuance issued situation. 3) full weight importance Give of This examination necessary by was made patents, recognizing the notice function of Mr. Packard’s insistence that this court drafter/patentee that it is the claim who is cases, a singular standard for such ultimately responsible problems creat- materially that this standard differs from by ambiguous ed terms. Wdien confronted *14 applied by the standard the Board to his patent with a claim that has several rea- case, and that our standard is the that one meanings patent sonable for which the it- by must be used the Board. (and self demonstrates no preference cer- However, the above discussion reveals term), tainly true of an incoherent the currently singular there is not one option result of this be a holding would by standard used this court but rather a ambiguous that an term definition fails standards, complex though complex comply statutory requirements range whose nevertheless can be de- Thus, for claim if a drafting. member of remains, scribed. The then is the the public pat- order understand the substantively Board’s standard different guess meaning ent claim must about the standard(s) ostensibly from the term, ambiguous the claim would not be and, so, this court if is it nevertheless patentable and is otherwise invalid.14 permissible. addressing Wfiien “indefiniteness” in an argues Mr. Packard is correct when he (a case), post-issuance
issued these (or complex that this court’s “standard” among interpretive options are the avail- understood) standards, however for indefi- Mr. judges. argument able Packard’s in post-issuance niteness cases differs ma- regarding “insolubly ambiguous” stan- terially from the standard for indefinite- essentially incorporates dard the first of applied by to pre-issuance ness the Board interpretive options. these As between opinion In its in this case the interpretive options, the second and third cases. Board, earlier, appears nothing there to be in the cases as noted invoked as its Alts., Inc., Mfg., interpretive option Athletic Inc. v. Prince 14. For a statement of this See Canada, (Fed.Cir.1996), by the courts in see Lord Loreborn’s 73 F.3d for a sub- test, three-part Wegner, cited in Harold C. choosing option, set of this the narrowest 112(b) § Lord Lorebom's Test meaning upholds patent, thus maxim- Indefinite- for ness, Paper presented at the Second Annual izing opportunity competitors for to de- Conference, Naples Experts Midwinter Patent sign infringing. around it without 10-11, 2014). Naples, (February FL stood) determining compliance option with second tradi- standard —or —the 112(b) §of the standard requirements ordinary tional “one of skill” test —dis- a claim is indefi- set forth in the MPEP: earlier, cussed application USPTO’s phrases words or nite it contains when the traditional goes beyond well is unclear. MPEP meaning See whose apply what this court is known to to claim 2173.05(e). interpretation post-issu- when the issue is 112(b). compliance ance with effect, the USPTO reads the statuto- ry “particularly that claims requirement remaining Thus the issue to be decided distinctly claim the sub- point[ [ ] out and ] Board, law, is whether the as a matter of ject ambiguity matter ...” to mean apply interpretive op- entitled third inadvertent, claiming, whether intended understanding tion to its of the traditional The acceptable.15 is not examiner’s test indefiniteness. Mr. Packard ar- duty applicant is to insist that the remove gues that the Board not do that. He perceived ambiguity by precisely more propounds that in his case ap- the Board of the claim. defining scope And plied wrong standard for indefiniteness rejection grounds should an examiner’s on First, ways. in two argues Mr. Packard noncompliance with the statute be taken “person ordinary that a skill the art is Board, up appeal on the Board will deemed to read the claim term not position enforce the same standard. This particular the context of the claim in which comports closely most to the third of the disputed appears, term but in the con- policy options preceding outlined patent, including text the entire .of section. specification.” Appellant’s (citing Br. 35 Packard, response From its to Mr. I 1313). Board, Phillips, 415 at F.3d he position understand the Board to be that it argues, refused to do and instead applies pro- the traditional test to claims analysis solely stated its focused posed by patent applicant, namely, *15 claims, “the ... [not] reasonably whether what is claimed is un- what is contained in the disclosure.” Id. at ordinary derstood skill in one the art. However, applying this test the Board Second, does so a manner —the “lower thresh- and more to point, Mr. old”—that uniquely applicable argues Packard that wrongly the Board pre-issuance situation. invoked its own “lower threshold” for in- definiteness, rather than this court’s “inso-
A post-issuance review of our cases re- lubly ambiguous” standard. Mr. Packard veals that when this court has been called argues that it is an error for the Board to upon to challenge, decide indefiniteness adopt a test for indefiniteness that differs yet no opinion expressly adopted has from what he describes as this court’s third interpretive option previ- described ” “long-established ambiguity’ ‘insoluble ously, essentially the one that the USPTO test. Appellant’s now Br. 18. He further ar- precedents uses. Thus our make gues clear that ignore whether our the “Board cannot this standard is thought precedent to be either the option— [c]ourt’s first or substitute its own (however “insolubly ambiguous” under- test for indefiniteness this [c]ourt’s Props, Tredegar Corp., 15. See 3M Innovative degree claims are drafted with a of indefinite- (Fed.Cir.2013) (Plager, 725 F.3d argue ness so as to leave room to later for a J., ("[sjometimes concurring) ambiguity such interpretation capture designed broad la- to drafting] sloppy claim [in is the result of ter-developed competition.”). drafting, appears and sometimes it that Overall, statute, analysis.” they particularly point Id. at 39. Mr. Pack that out view, consistently distinctly “this claim subject [e]ourt ard’s matter single standard for claim defi applied regards which the inventor as the inven- niteness, post-issu pre-issuance both tion. ance,” argues and Mr. Packard “[t]he IAs noted at the end of introductory [cjourt’s rejection ‘insolubly
Board’s of this A, above, section permissi- the issue of the appli and its ambiguous’ implicit ble pre-issuance test USPTO indefi- ambiguity’ cation of a ‘lower threshold of niteness cases can be decided without re- pursuant Miyazaki was error.” Id. at solving whether this court’s current test (citing Miyazaki, Ex Parte 38-39 89 for post-issuance indefiniteness is the tra- (B.P.A.I.2008)). 1207, 1211 U.S.P.Q.2d standard, ditional focused on what one of USPTO, in Pack- response Mr. understand, skill in the art would or the point, argues ard’s first that the Board’s allegedly “insolubly different ambiguous” clearly attempted decision shows that it it, standard as Mr. Packard views or some light read the claims in of the written because, combination of the two. This is description. specification “But the [read as the above discussion makes clear and as description] written added to the am- Mr. argues, proposed by Packard the test claims, biguity of the because it describes the Board for in pre-issuance its use claim the features of the coin-holder in a manner disputes materially differs from this internally both inconsistent and inconsis- (or both) application court’s of either tent Appellee’s with the claims.”16 Br. 8. question those standards. On this I agree
Second, with Mr. Packard. addressing question, the main proper test for the Board to D. use, says the USPTO it “asks the same I turn underlying then to Mr. Packard’s assessing as this [c]ourt argument, i.e., test of a indefiniteness whether a claim— to pre-issuance Board matters of claim reasonably skilled artisan could discern the interpretation ap- cannot differ from that metes bounds the claim.” Id. at 9. But, USPTO, says ap- plied by post-issuance while their court to proach answering question during disputes. explained construction As prosecution may effectively above, in a result low- proposes apply the Board court’s, er threshold for ambiguity than a traditional standard but third of *16 approach provides legitimate their means the interpretive policy options outlined ferreting prior for out indefinite claims Namely, ordinary earlier. if one of skill in issuance. art, considering the after the information provided by applicant including the the argues patent sys-
The USPTO that the description, putting written and after the tem works claim ambiguity best when is disputed pro- term the context of the examination, during resolved than rather posed patent, claim finds the to contain litigation to await to determine the actual phrases meaning words or whose is un- scope Accordingly, says of a claim. the USPTO, clear, require then the examiner is to the agency ability the must have the applicant precisely to “more define the require applicants to amend their claims concise, clear, to ensure that the of the claimed claims are metes bounds inven- unambiguous, by issuing rejection. or in the words of the tion” an indefiniteness pointed upholding rejection 16. The USPTO also out the the Examiner's rely upon Miyazaki Appellee’s Board did not the claims for indefiniteness. decision Br. 21. 1324 U.S.P.Q.2d process, plays ensuring at 1211. And its examination Miyazaki,
See
Board,
the
appeal
appli-
should
quality
patents
and compliance with
the needed
provide
cant fail or refuse to
statutory
requirements.
clarification,
apply
the Board will
the same
problem
patent
The
of indefiniteness in
interpretation requirement.
claiming
major
has been a
concern of
(and
my
per
view
curiam
courts,
commentators,18
as well as
and ef-
court),
authority
it is within the
forts
improve
USPTO to
the situa-
interpret
applicable
to so
USPTO
stan-
certainly
tion
are to
encouraged.
Further,
my
it
dard.
view
as
good
why unnecessary
There are
reasons
matter,
policy
support
this court should
ambiguity
incoherence and
in claim con-
with,
doing.
begin
in so
To
I
the USPTO
structions
disapproved:
should be
nothing
precludes
find
the statutes that
(cid:127)
they generate many of
claim
con-
adopting
from
such guidance
USPTO
disputes
struction
that plague the
for the examiners and the Board.17 Be-
courts;19
yond that,
precedent
of this court or of
(cid:127)
they increase the
society
cost to the
Supreme
addressing patent
Court
products
study
new
and ideas. As one
suggests
construction issues
claim
it,
put
quality patents
“[How
are those
a position
part
such
on the
of the USPTO
protect
inventions
limited nov-
beyond
authority
would be
its
prop-
elty
provide overly
or that
pro-
broad
er administration of
governing
stat-
...,
costly
tection
which can be
contrary,
pointed
utes. On the
as
out
society,” Patents
and Innovation:
per
opinion,
curiam
this court in In re
Zletz,
(Fed.Cir.1989),
Policy
OECD,
Trends and
Challenges,
arounds consider, Study record to the prosecution A Federal Trade Commission record before the overly patent development that an broad USPTO is and observed examination, not during fixed competition “can ... and harm and the block rely USPTO innovation,” interpreting does not on it for Federal Trade Commis- sion, claims. To Promote Innovation: The
Proper Competition Balance and The fact that yet this court has not seen A Policy, Report by Patent Law and apply fit to the same interpretive policy Commission, at the Federal Trade option post-issuance cases as the USP- (October 2003), http://www.ftc.gov/ apply pre-issuance TO wishes to cases is sites/default/fíles/doeuments/reports/ USPTO, why reason given its promote-innovation-proper-balance- unique and central patenting role competition-and-patent-law-and-policy/ process, should not be able to apply it innovationrptpdf;20 dealing with pre-issuance patent applica- (cid:127) they judicial and waste scarce re- tions. sources on claim construction cases short, there are no legal obstacles to that should never necessary have been proposed interpretation, USPTO’s and litigate, supporting encouraging and compelling there are why, reasons as a litigation the kinds of that have made matter, policy pre- this court should not (Patent dirty “patent trolls” words. clude or otherwise interfere with the USP- variety trolls are also known carrying TO responsibilities out its full “patent other names: assertion enti- Further, under the Patent Act. there is no (PAEs), “non-practicing ties” entities” why reason those employed trained (NPEs).)21 patent the art of claim drafting reasons,
Beyond persuasive policy these cannot comply require- with the USPTO legal ments, as a matter the recognizing USPTO does not that the nature of the presumption have to deal with the particular valid- invention and the art involved ity grant post-issuance pat- the statutes degree precision will affect the to which possible.22 ents—sometimes said hinder such an Maskus, Bessen, al., Reforming years,”); 20. See also Keith E. U.S. James et The Private and Trolls, Policy: Getting Right, Regulation Patent the Incentives Social Costs Patent RELATIONS, 26, (Winter 2011-2012) ("To COUNCIL ON FOREIGN CSR the extent (Nov.2006), http:// opportunistically ‘fuzzy No. at 19 available at ... NPEs assert firms, www.cfr.org/content/publications/ patents’ against technology real ntCSR.pdf hold- can decrease the C'[P]atent incentives for these firms to attachments/Pate innovate.”); platform Lemley ers with broad claims on technolo- Mark & A. but see A. Melamed, gies may try discourage Douglas Missing to use those claims to The Forest For Trolls, (2013) competitors through licensing restrictions and 113 Colum. L.Rev. ("trolls litigation against technologies symptom larger on similar are a flaws in the products.”) patent system ... those who have focused on have, effect, missing been trolls forest See, President, trolls.”). e.g., Executive for the Office of Innovation, at 9 Patent Assertion and (June 2013), Suddendorf, http://www.whitehouse.gov/sites/ generally 22.See Thomas ("Even default/files/docs/patent report.pdf Gap: Separates if The Science What Us from — Books, (Basic 2013) (the prevail assertion entities do not in the Other Animals differ- courtroom, significantly ultimately actions can re- is the of authors to their ence motivation litigation symbols grammar duce incremental innovation while create to share what *18 know). ongoing, persist a situation that can finding that the claim “a E. Board’s terms ” edge ... end edge” raised and “the end opin- curiam Finally, per as noted the Lastly, agree indefinite. I that it is are with ion, *19 TECHNOLOGIES, INC., InTOUCH Health,
doing business as InTouch
Plaintiff-Appellant, COMMUNICATIONS, INC.,
VGO
Defendant-Appellee.
No. 2013-1201. Appeals,
United States Court
Federal Circuit. 9, 2014.
May a few notes I offer additional edge” whether “one side unclear refers of Mr. Packard’s regard to flanged side edges” back to “double compliance and proposed claims their with previously introduced in the claim or if it the USPTO the standard review entirely. something refers to else There- apply. chosen fore, I Board’s finding would affirm the disputed phrases arguments and this term is indefinite. and the are outlined Mr. Packard USPTO I have considered each of Mr. Packard’s agree 1.1 with the Board Appendix remaining arguments and find them un- Mr. top “front is indefinite. the term side” Mr. ten persuasive. pages Packard’s over “front might Packard used either explanatory briefing illustrates that the way “top side” so in a side” or and done requisite lacks the itself terminology consistent with the that was clarity minimum to define the boundaries description. Using different the written claims. By leaving of the am- portion refer to the terms to same biguous, public the courts are left top side” and “surface of card—“front boundaries, clarify patent’s direct Thus, ambiguity. its own I card”—creates requirements conflict case finding would affirm the Board’s See, Carbon, e.g., law. United U.S. at side” top terms “front and “surface of 63 S.Ct. card” are indefinite. with at agree beginning I also the Board Mr. As stated of this opin- ion, ambiguity created an in his claims I arrive at Packard the same conclusion as we ... opinion. when he introduced “a raised end arrived at I per curiam then “the ... edge” get by way referred later to there both of the “narrow” per It is not these in the edge opinion, end.” clear whether route curiam which I join, addressing refer to or to also phrases way two the same “end” Mr. arguments two “ends.” Packard should directly; different Mr. Packard’s rea- ambiguity during pros- explained have corrected this sons I I find latter unavail- Therefore, ing. ecution. I would affirm APPENDIX 1