“But the inference of indefiniteness simply from the scope finding is legally incorrect: ‘breadth is not indefiniteness.”
by: Brad Sheafe, Chief IP Officer | November 30, 2017
I just don’t get the Federal Circuit’s patent jurisprudence. I’d like to, I really would – as the sole appellate court for patent matters in this country, their decisions are critical in our knowledge economy – but I just don’t. How in the world can the claims of a duly issued patent be summarily declared ineligible for patenting as being directed to an abstract concept (whatever that is – certainly the courts don’t know) after nothing more than a cursory review at the pleadings stage, when an equally subjective, judicially created doctrine like indefiniteness, which itself has been subjected to recent SCOTUS interpretation of questionable utility (we call that little gem Nautilus), apparently requires not only a thorough scrub of intrinsic and extrinsic evidence, but dueling expert testimony?
I just don’t get it.
The damage caused by the completely unpredictable, grossly inconsistent and poorly thought out application of the Supreme Court’s Alice decision has been well documented – this despite a clear warning from within the very text of that decision itself foreshadowing the damage such misapplication could have, “At the same time, we tread carefully in construing this exclusionary principle lest it swallow all of patent law.. At some level, ‘all inventions . . . embody, use, reflect, rest upon, or apply laws of nature, natural phenomena, or abstract ideas’”.
Seems pretty clear, doesn’t it? But it has gone completely unheeded by the district courts and the Federal Circuit alike as they have proceeded to revoke hundreds of government-granted property rights in the form of patent claims without so much as an evidentiary hearing.
Oddly, there is no such warning in Nautilus, in which the SCOTUS exchanged the CAFC’s fuzzy and subjective “insolubly ambiguous” indefiniteness standard for the equally fuzzy and subjective “reasonable certainty” standard. It would seem that if the courts have been willing to throw out claim after claim on the basis of nothing more than a subjective application of the two-part “Mayo test” as laid out in Alice, then they should have no problem doing the same with the comparatively straightforward judicial challenge posed by indefiniteness in view of Nautilus. It would seem so…unless you recently read BASF Corporation v. Johnson Matthey Inc., which the Federal Circuit decided last week.
What makes BASF noteworthy are not the facts of the case, although there are some interesting aspects re the point of novelty, but rather the effort that went into deciding the indefiniteness issue, which itself was fairly run of the mill. Both at the district court and appellate levels, where the Federal Circuit flipped the DED’s Judge Robinson, who had found the subject claims indefinite, the judges spent considerable time on a detailed review of both the intrinsic and extrinsic evidence, including comparing and contrasting the testimony of the experts each party put up to debate the indefiniteness issue. Yup, you read that right, while questions of basic eligibility can be decided in the absence of facts or evidence, indefiniteness not only requires a thorough review of the intrinsic and extrinsic evidence, but also expert testimony put up by both parties.
But it gets better. In pointing out the flaws in the district court’s legal reasoning, Judge Taranto, on behalf of the panel of he, Judge Lourie and Judge O’Malley, penned some quotable quotes on how resolving thorny subjective issues such as indefiniteness should be accomplished by members of the bench. When commenting on the district court’s finding that certain features were not explicit in the claims, Judge Taranto chided,
“By itself, that observation merely describes two things not expressly stated in the claims. But ‘an inventor need not explain every detail because a patent is read by those of skill in the art.’” (Quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355, 1367 (Fed. Cir. 2011)).
Take a note there for future 35 USC § 101 rejection traversals and motion practice, friends: “an inventor need not explain every detail because a patent is read by those of skill in the art.” He then goes on to write,
“The district court’s analysis does not consider that the specification makes clear that it is the arrangement of the SCR and AMOx catalysts, rather than the selection of particular catalysts, that purportedly renders the inventions claimed in the ’185 patent a patentable advance over the prior art. As a result, the claims and specification let the public know that any known SCR and AMOx catalysts can be used as long as they play their claimed role in the claimed architecture.” (emphasis added.)
So, for indefiniteness, the specification is critical, but it can be ignored when determining eligibility? I realize that the CAFC jurisprudence on the role of the specification vis-à-vis eligibility is a mess (and at times, diametrically opposed on the topic), and that resolving indefiniteness is specifically focused on determining the meaning of the claims to clearly define their “metes and bounds” for one of ordinary skill. But for crying out loud, if the specification, let alone dueling experts, is critical for that effort, is it not readily apparent that it should be equally critical for one trying to determine what the claims “are directed to”, which seems to be a popular buzz term in eligibility decisions?
Perhaps my favorite guidance provided by the Federal Circuit in this case, though, is this little tidbit, criticizing the district court’s claim scope finding, “But the inference of indefiniteness simply from the scope finding is legally incorrect: ‘breadth is not indefiniteness.’ SmithKline Beecham Corp. v. Apotex Corp., 403 F.3d 1331, 1341 (Fed. Cir. 2005) (internal brackets omitted).” So, the law has now been clearly stated: Inferring indefiniteness simply from the scope finding is legally incorrect, because “breadth is not indefiniteness.” Do you know why? Because breadth is a separate issue in patent law, and is dealt with primarily through a review of novelty and obviousness as well as being informed by how well the claimed invention is enabled for a person of ordinary skill. Yes, a claim must be clear, and its meaning “reasonably certain” to a skilled artisan in order to be valid.
But if it is, it is of no further consequence to the discussion of indefiniteness if the claim, as so defined, is overbroad. If a claim is overbroad, it will either be anticipated or obvious or not enabled, and the legal mechanisms for making those determinations are found in their own sections of the patent statutes and relevant case law, separate and apart from indefiniteness. And guess what? The exact same principle applies to eligibility! Breadth is not indefiniteness – and breadth is not ineligibility either. As Judge Taranto so eloquently reminded us all, inferring a subjective patentability standard from a review of the claims (let alone a cursory one) is “legally incorrect”. I couldn’t agree more – so why can’t the courts seem to recognize that when it comes to questions of eligibility?
Let’s review what we’ve learned today from the Federal Circuit’s instruction in the BASF Corporation v. Johnson Matthey Inc. decision:
- (i) that “an inventor need not explain every detail because a patent is read by those of skill in the art,”
- (ii) it is critical to review the specification to determine the meaning of the claims, and
- (iii) inferring indefiniteness simply from claim scope finding is legally incorrect, because “breadth is not indefiniteness.”
I realize, like all issues at the appellate level, there are variables to decisions, including panel make up. But surely others, including at least some of the judges at the Federal Circuit, must see the irony and apparent duplicitousness in taking these positions with respect to indefiniteness and completely abandoning them when it comes to eligibility – especially given they are both judicially created doctrines requiring subjective evaluations of patentability, right? I hope? For the sake of our patent system?
The reality is, that while courts play word games and parse claims down to the phoneme level to find them “abstract”, millions of dollars of property value are being destroyed in this country as the underpinnings of what was once the world’s greatest patent system are eroded by bad law made worse by bad judicial practice – all in the name of protecting the wealthiest companies in world history from having to pay for intellectual property they have clearly stolen. They’ve even coined a name for it, “efficient infringement”.
Would you be a fan if, upon discovering your house had been burgled by some billionaire, the police explained it wasn’t as bad as all that, it was just a case of “expedient redistribution of property”, then declared your home ineligible for judicial protection and simply bid you good day? I didn’t think so.
And to make it worse, BASF serves to demonstrate that the courts actually do know how to do a diligent job of dealing with subjective issues of patentability, at least more traditional ones such as indefiniteness. There is no reason why those same pathways cannot be followed for the determination of eligibility. Maybe it’s just because the concept is still relatively new, and admittedly Alice is terrible law that does not answer the one key question that matters, i.e., “what is an abstract idea”, and thus provides no concrete guidance for its application. Maybe.
But, at some point, after watching court after court clear its docket using 35 USC § 101 at the pleadings stage, avoiding the judicial responsibility to collect and weigh the evidence upon which our legal system is founded, one has to wonder if we’ll ever see an end to the destruction of property wreaked in the name of expediency and convenience for the courts and large infringers. Our patent system and economy hang in the balance. And there is nothing indefinite about that.