A little more than a year ago, the Supreme Court redefined the standard by which lower courts determine whether patent claims are indefinite under 35 U.S.C. § 112, second paragraph. Specifically, in Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court replaced the “insolubly ambiguous” and “amenable to construction” standards, which had been at the forefront of definiteness analyses for over a decade, and 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.” 134 S. Ct. 2120, 2124 (2014) (emphasis added) (hereinafter referred to as “Nautilus II”). The Court asserted that unlike the “insolubly ambiguous” and “amenable to construction” standards, which were too “amorphous,” the new definiteness standard “trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” Id. at 2130-2131.
Judging by its reaction after the subsequent remand of Nautilus II, the Federal Circuit views the new definiteness standard as an equally if not more uncertain standard than those it replaces: “[t]he [Supreme] Court has accordingly modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.”’ Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1379 (Fed. Cir. 2015) (hereinafter referred to as “Nautilus III”). While it remains to be seen whether the Federal Circuit’s apparent skepticism regarding the clarity of the phrase “with reasonable certainty,” is well-founded, certain themes have emerged from the Federal Circuit decisions that have applied the new definiteness standard.
Post-Nautilus II, the Federal Circuit has placed an increased emphasis on interpreting potentially indefinite claim terms from the viewpoint of a skilled artisan at the time the patent application is filed. For example, in Eidos Display, LLC v. AU Optronics Corp., the Court reversed the decision below which held that the phrase at issue, for which four distinct claim constructions were proposed, was inadequately supported by the specification, thus rendering claims containing the phrase indefinite. 779 F.3d 1360 (Fed. Cir. 2015). The Court determined that, given the state of the art known to the skilled artisan and the teachings found within the specification, one of the phrase’s constructions was clearly correct, and consequently held that claims containing the phrase were not indefinite. See id. at 1365-1366.
In DDR Holdings, LLC v. Hotels.com, the Court affirmed the decision below, which held that the phrase “look and feel,” used to describe a host website, was not indefinite. 773 F.3d 1245 (Fed. Cir. 2014). The Court indicated that although the phrase “look and feel” is seemingly subjective and was defined in an open-ended fashion in the specification — “including logos, colors, page layout … or other elements that are consistent through some or all of a Host’s website” — the phrase had an established, sufficiently objective meaning in the art at the time the patent application was filed, such that a skilled artisan would understand the scope of claims reciting the phrase. See id. at 1260-61. The Court found the evidence presented at trial particularly convincing, as the evidence indicated that an allegedly infringing party, as well as its customers, understood the meaning of the phrase “look and feel.” Id.
In contrast with DDR Holdings, the Federal Circuit held that the phrase “unobtrusive manner that does not distract a user” was indefinite in Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1373-4 (Fed. Cir. 2014). The Court asserted that the specification’s recitation of a single, open-ended definition for the subjective phrase failed to provide it with sufficiently objective boundaries. The Court reasoned that to find otherwise would be tantamount to a “post-hoc effort to ascribe some meaning” to the phrase, which would be contrary to the holding in Nautilus II. Id. at 1373. DDR Holdings and Interval Licensing indicate that potentially indefinite terms and phrases which are subjective in nature and are defined in an open-ended manner will be subject to heightened scrutiny during a definiteness analysis. Thus, patent practitioners would do well to consider supporting a specification’s subjective terms and phrases with evidence indicating that the subjective terms and phrases contain sufficiently objective features in view of the state of the art and/or knowledge of the skilled artisan at the time of filing.
Definiteness decisions in the years to come will undoubtedly reveal whether the unreliable compass represented by the “insolubly ambiguous” and “amenable to construction” standards has truly been replaced by a more reliable guiding instrument. In the meantime, patent practitioners can be reasonably certain that the knowledge of the skilled artisan is more crucial to the definiteness analysis than ever before.