to beside.63 Another paneliststressedthe importance of the doctrine of
`through
`for those relatively
`equivalents which mayextend claimscoverage beyond its literal
`terms
`rare situations where therejust wasnt plain word or collection ofwords that was going to
`work and denying infringement would be manifestlyunfair.64
`
`Varyingnomenclature
`major contributor to clarity is the existence of
`good solid
`consistentlexicon for claiming in technology area.65 Thus in biotech and chemistry there is
`relativelypredictable set of terminologyor nomenclature for describing inventions6 most
`prominently chemistrysuse of the periodic table and molecular structures.67 Beyond this the
`commonnomenclature.68 In
`biotech community has invested considerable effort in developing
`contrast panelists described how the IT industriesespecially software lack clear69 and
`uniform7nomenclatures and commonvocabular
`
`Functional claiming Reliance on functional language explainingwhatthe invention
`language explaining what the invention iswas another source of
`does rather than structural
`vagueness identified by panelists.72 Functional claims can be abstract
`conceptual73
`
`63Burk at 10 5/5/09
`
`TMClarke at 203 3/19/09 suggesting that such limited use of the doctrine of equivalents appropriately
`accommodates notice goals but that more expansive and frequent use wouldpose problems But see
`Petherbridge at 43 5/5/09 suggesting eliminating the doctrine of equivalents
`
`65Kappos at 149 3/19/09 i.e where there is dictionary of someformsee also Wagner at 198
`4/17/09 claim construction works wherewe have
`fairlywell understood set of nomenclature
`
`66Durie at 18 5/5/09 see also Lemleyat 195 4/17/09 describing the boundaries of the patent doesnt
`few industries like pharmaceuticals and DNA where we have
`work outside of
`clear nomenclaturethat
`everybody understands
`
`67Menell at 29 5/5/09 see also Horton at 174 3/18/09 Hall at 264 5/4/09 Vermontat 221 4/17/09
`
`68Shema at 70-71 5/4/09 also noting the PTOs publication of Sequence Listing Rules to govern
`structural aspects ofDNA inventions
`
`69Lemley at 195 4/17/09
`
`70Kushan at 269 5/5/09 Similarly one panelist observed that IT terminologyfrequently uses words
`that are generic such as processingor storing that can be construedbroadlyeven if the context
`narrow meaning Lutton at 162-63 5/4/09
`
`suggests
`
`71Lee at 5/5/09
`
`72Kunin at 114 3/19/09 statingthat when claims are written in fairly abstract form both as to pure
`functionality and.
`from the standpoint of what the invention does as opposed to what the invention is
`it is very difficultto know what the claims cover and what you mayhave to do to avoid infringement
`see also Kappos at 174 3/19/09 discussingclaims that cover the effect of what was done rather than
`
`84
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`making it difficult to predict the various ways in which the claim mightbe construed.74 Panelists
`found results-based claiming big problem in the IT arts particularly software.75 Some
`panelists warned that functional claiming also impacts biotech patenting76 but othersexplained
`that it raises fewer concerns in that industrybecause patentees in biotech must provide
`considerable information regarding the inventions structure in the specification or the claim.77
`
`Faultyincentives Some panelists argued that the system generally creates an incentive
`to be as vague and ambiguousas you can with your claims78 and to defer clarity at all costs79
`According to one panelist applicantstry to be as vague as possible avoid any expression of
`meaning with the hope that when they get to litigation they can broadenthe meaning beyond
`what the Patent Office assumed it was.8 The view was not unanimous however and other
`panelists asserted reasons whypatentees would want their patents to be clear.81 Indeed one
`panelist explicitly acknowledged that incentives are in tension.82
`
`what was actually created
`
`73Menell at 29 5/5/09
`
`74See Meurerat 210 12/5/08 The more functional
`the claiming is the harder it is for anyone to
`understandwhat the propertyrights are. But cf Duffy at 263 -64 12/5/08 suggesting that the true
`source of construction problems may be excessive literalism including failure to adequately draw upon
`rather than functional
`
`language in itself
`
`the specification
`
`75Kappos at 174 3/19/09 see also Lee at 8-9 5/5/09 functional claimingis leading to
`notice regardingthe boundaries of software patents
`
`failure of
`
`76Meurer at 209 12/5/08
`
`77See e.g Shema at 59-60 5/4/09 citing need to claim things structurally and reference
`dont think theres any major impediment about
`representativesamplesKushan at 249 12/5/08
`language in biotech because essentially you go back to the
`translating and interpreting functional
`
`specification.
`
`78Kappos at 123 3/19/09 see also Petherbridge at 15 5/5/09
`
`79Wagner at 181 4/17/09
`
`80Wagner at 200-20 4/17/09
`
`81See Messinger at 117 3/19/09 observing that clarity enables the patentee to rely on the resulting
`patent Menell at 53 5/5/09 arguing that in biomedical fields applicants want strong claim so
`that they can justify all of the clinical testing and other expense
`
`patent practitioner of trying to have
`82McNelis at 86 5/5/09 noting the natural tension as
`concise patent but also trying to have the broadest scope
`
`clear
`
`85
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`Institutionalconcerns/deferred resolution Panelistsfurther described how the patent
`system generally defersresolutionof ambiguities One noted that examination at the PTO
`typically focuses on issuesof novelty and nonobviousnessrather than clarity.83 Moreover as
`another panelistargued there is no good mechanism short of litigation the courthouse door for
`patent really covers the PTO reexamination systemis confined to questions
`testing just what
`of novelty and nonobviousness and cannot be used directly for testing the scope of
`
`claim.85
`
`Finally panelists pointed to the delay expense and uncertainty imposed by litigation
`over claim scope.86 District courtjudges they note often hold claim-construction hearings after
`much litigation expensehas been incurred.87 Moreover district court claim constructions are
`in approximately one-third of appeals88 leading panelists and
`overturned by the Federal Circuit
`commentatorsto argue that claim meaning is not known until the Federal Circuithas ruled.89
`
`83Messinger at 170 3/19/09
`
`fundamental failing of the U.S patent system see
`84Phillipsat 177 3/18/09 describing this as
`also Verizon CommunicationsInc Comment at 3/20/09 Counselsopinionas to the boundaries of
`the patent is both expensiveand often unavoidably unreliable leaving commercializers with no
`reliable way of determining patent boundaries short of litigationquoting BESSEN MEURER supra
`note 16 at 10
`
`85See 35 U.S.C 303 providing for reexamination upon finding that prior art cited under 35 U.S.C
`substantial new question of patentability Van Pelt at 155 5/4/09 see also IBM
`302 presents
`Comment at 2/12/09 arguing that permitting challengers to raise indefiniteness in any post-grant
`procedureswould permittimelyclarificationor invalidation of claims as necessary
`
`86See e.g Durie at 69 5/5/09 the cost of litigation is simplyprohibitive for relatively small start-up
`companies IBM Comment at
`2/12/2009
`
`87Harris at 121 3/18/09 the Markman
`right before trial
`
`or any other dispositive motions are heard
`
`88Meurer at 211 12/5/08 citing work by Judge Kimberly Moore see Kimberly MooreMarkman
`CLARK REv 231 233 239
`Eight Years LaterIs Claim Construction More Predictable Lrwis
`2005 reporting that the Federal Circuit
`in reviewing district court claimconstruction decisionsfound
`that 34.5% of the terms were wrongly construed and reversed vacated and/or
`remandedthe judgment
`Schwartz PracticeMakes Perfect An
`due to claim construction errors in 29.7% of cases David
`Empirical Study of Claim Construction ReversalRates in Patent Cases 107 MIcH REV 223 248-49
`2008 reporting similarresults
`
`too many cases we dont knowwhat the claims mean until the Federal Circuit
`89Watt at 69 5/4/09
`speaks see also Bessen at 47 3/19/09 effectively the boundariesof patent are not clear and
`predictable until essentially the Federal Circuit decideswhat they are Mcneil at
`1-32 5/5/09
`describing study in which panels of district court judges in simulatedMarkinan hearings split evenly in
`their claim-construction decisionseven when reporting high confidence in their results
`
`86
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`

`Difficulties in ForeseeingEvolving Claims
`
`second aspect ofobtaining notice is acquiring information about claims that might
`issue after the search As one panelist explaineddue to pending applications your search is
`necessarilyout of date as ofthe date you searched iL9 Efforts to obtain notice can fail due to
`unpublished patent applications and iisubsequent amendments to claims in published
`
`applications
`
`Patent examination takes an average ofnearly three years from filing until the patent
`issues or the application is abandoned Applicants are able to add or amend claims during the
`examination process and they may do so to better cover rival products that they see in the
`marketplaceY2 Moreover applicants can and frequently do extend the examinationprocess by
`filing for multiple continued examinationsthereby increasingthe time for amendments by
`years93 The sole constraint on the amendmentprocess is that any new or amended claim must be
`sufficiently supported by the onginal speeification94
`
`Partialbut very valuable notice is afforded by PTO publication ofpatent applications 18
`months after filingexcluding those for which no foreign filing entailingsuch publication has
`
`90Yen at 87 12/5108
`
`1USPTO Performance and AccountabilityReport Fiscal Year2010 18 2010 2010 PTOAnnual
`Report available at http /www uspto gov aboui/stratplaiv ari2010USPTOFY20l0PARpdfSchwartz
`at 15 3l9i09 pendency is serious problem
`
`237 C.F.R J21 2008 explaining the manner in which amendmentsmustbe filed Kingsdown Med
`Consultants Ltd Hollisler mc 863 F.2d 867 874 Fed Cit 1988 declaring that it is not in any
`manner improper to amend or insert claimsintended to cover competitors product the applicants
`attorney has learned about duringthe prosecution of patent application provided that the amendment
`or insertion otherwise complies with all statutes and regulations
`
`USPTOPatent Public Advisory CommitteeAnnual Report 112008 explaining that an increased
`number of applications are being re-filed after
`final office action or dunng appeal and the continuing
`application becomesassignedto an examiner and
`re-examinedagain LSPTO Changes to
`Practicefor Continued Exarninanon Filings72 Fed Reg 46716 46718 Aug 21 2007 reporting that
`continued examination filings other than divisional applications accounted for 294%of all filingsin
`fiscal year 2006
`
`Platte Chemical Co 304 F.3d 1235 1247-45 Fed Cit 2012Whileit is
`See e.g PIN/NIP Inc
`legitimate to amend claimsor add claims to patent application purposefully to encompass devices or
`processes of othersthere mustbe support for such amendmentsor additions in the originally filed
`application TurboCare Div of Elemag Dcliii al Turbomachinery Corp GeneralElec Co 264 F.3d
`1111 1118 Fed Cit 2001 When the applicant adds
`claimor otherwise amendshis specification
`the onginalfiling date
`the new claimsor other added material must find support in the original
`
`after
`
`specification.
`
`87
`
`NK8OODCO7723667
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`

`been made.95 Third parties can track patent applications including amendments to claims
`through the Patent Application Information Retrieval PAIR system Panelistsindicated that
`PAIR makes tracking the evolution of claims very manageablein some areas.96 Even so
`number of panelists emphasizedthat notice is lacking as to applications without foreign filings
`or less than 18 months old97 and that surprises still occur when late amendments significantly
`shift the coverage of claims.98
`
`Panelistswarned that claims can be amendedin ways that cannot readilybe predicted by
`Such redraftclaims
`are in effect hidden from the public.100
`reading the specification.99
`One panelist pointed to the liberalamendmentpractice that enables applicantsto
`misappropriatby amendmenti.e to wait until somebodydoes something and then you
`amendyour claims to cover it.101 IT industrypanelists
`in particular reported that the problem is
`
`95See 35 U.S.C 122b2000 For other exceptions
`1.211b
`
`to publication see 37 C.F.R
`
`1.211a and
`
`96McNelis at 120 5/5/09 see also Watt at 615/4/09 due to the ability to track applications in the
`Miller at 201 3/18/09 Kappos at 259
`Patent Office
`very little surprise anymore
`single application Messinger at 259 3/19/09 when
`3/19/09 PAIR works well for following
`Si up it works great
`
`do worry about those applications filed in the U.S only
`97See Phillips at 202 3/18/09
`at 123-24 3/18/09 unpublished claims pose problemYen at 8712/5/08
`
`Harris
`
`98See Messinger at 234 3/19/09 noting difficulty when all of sudden
`
`for somesurpriseturn of
`
`events they go in very different direction that is very broad compared to the original filing
`Laryngeal Mask Co AmbuA/S618 F.3d 1367 Fed Cir 2010 provides
`recent example The
`Federal Circuit reversed finding that the patentees competitordid not infringe because its laryngeal
`mask airway device lacked tube joint Until
`prior to issuance the claims had contained
`language requiring tube jointbut the applicant deleted that language duringthe final phase of
`Id at 1371-72 Although the specification was replete with discussion of
`tube joint
`prosecution
`preferred embodimentand
`id at 1371 the Federal Circuit found that the specification merely described
`did not limitthe claim
`
`99See e.g Meurerat 21112/5/08 Hidden boundary informationcaused by continuation practice is
`big problemMerges at 265-66 5/4/009 cf Kushan at 268 12/5/08 noting that many people
`outside biotech have experiencedthe problem that claimsmorph over timeand eventually have no tie to
`what is actually invented
`
`Bessen at 47 3/19/09
`
`Merges at 266 5/4/09 see also Lee at 121 5/5/09 noting that non-practicing entities mayacquire an
`application and then file continuations and minethem by amending claims to read on others products
`Schwartz at 13 3/19/09 describing this as the most pernicious form of continuation practice
`
`88
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`magnified when an applicant uses repeated continuations to greatly extend the examination
`
`process
`
`102
`
`On the other hand panelists from the life sciences indicated that they are very capable of
`an application and being able to tell what kind of claims mightcome
`reading
`specification
`out.103 They attribute this in part to strict application of the writtendescription and enablement
`requirements in that sector.104 While acknowledging that there is no risk-freepath105 and
`noting the presence of the occasional contraryexample106 they conveyed the overall message
`that there really are no secrets out there anymorewith everything being published.107
`
`Panelistsfrom other industries affirmed their ability to make decent predictions
`regarding the claims that would result from published patent applications.108 In general
`message was that the task while not necessarilyeasy was manageable One panelist explained
`very important part of our job
`that predicting the claims that will result from applications is
`albeit not real fun.109 Another added the caveat
`that yourebeing your own examinerwhen
`predicting the course an application will take you have to figure it out she continuedwithout
`getting any predictability out of the Patent Office.11
`
`their
`
`2See e.g Slifer at 118-19 3/1 8/09 Lee at 114 5/5/09 after repeated continuationsthe issued claims
`maylook nothing like the original claims Massaroni at 192-93 2/12/09
`
`3Shafmaster at 235 3/18/09
`
`4See Shema at 26 60-615/4/09 enforcement of the disclosure requirementsreally helps us to
`analyze the scope of the claims that
`applications will get out of the Patent Office and that will
`survive in court challenge Kushan at 249 12/5/08 statingthat there is decent law now on written
`on enablement that we can draw upon to determinewhether
`theres actually risk
`description
`from an application
`
`5Myers at 234 3/18/09
`
`6Watt at
`
`1-62 5/4/09 statingthat theres very little surprise anymore but notingthe contrary
`competitorchanged direction after prosecuting more limited claims for many
`example where
`years and ultimately was able to obtain claims that arguably covered Amgens product Amgen after
`billion dollars monitored the process through PAIR saw the broaderpatent
`license was available
`coming and fortunately
`
`previously investing
`
`7Bright at 67 5/4/09
`
`8Horton at 200 3/1 8/09 GEs ability to predict the claimsthat will evolve from an application is
`decent despite some degree of uncertainty
`
`9Phillipsat 202 3/18/09 see also Miller at 201 3/1 8/09
`happening
`
`kind of know how things are
`
`Stec at 200 3/18/09
`
`89
`
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`

`Difficulties in Sifting Through Multitude of Patents
`
`Effective notice also requires that
`
`firm be able to identify and review the patents and
`varietyof online databases of patents and
`patent applications that might cover its products
`published applications can be searched for this purpose e.g using text terms or the PTO
`classification system.111 Even with these automatedmechanisms however efficient and
`effective searches in some industries are hampered by the sheer number ofpotentiallyrelevant
`patents/applications the inability of search criteria to reliably identify relevant patents and the
`limitedtime available for search Again in other industriesclearance search may be quite
`manageable
`
`Hearing testimony described how in the IT and telecommunications industriesit is
`almost cost prohibitive to performclearance searches and explained that searches are likely to
`produce falsepositives and false negatives.112 Panelistsidentified
`virtual perfect storm of
`difficulties IT and telecommunications products typically contain many different components or
`features that are themselves covered by patents h13 Manyrepresentativesof firms from these
`industries viewed the sheer numbers of potentiallyapplicablepatents as primaryobstacle to
`reliable clearance.114
`
`Adding to the challenge many features are embodied in components supplied by other
`manufacturersOne panelist posed the issue starkly Nobodyat Palm knows anything about the
`
`Searches can be performed using the PTOs free full-text database other free search servicesor fee-
`based search services See PharmaceuticalResearch and Manufacturers of America Comment at 35
`
`2/10/09
`
`2Krall at 114 3/18/09
`
`113 See e.g Doyle at 162 5/5/09 stating that Palm product incorporates 800-1000components
`Simon at 20 1-02 2/11/09 noting that at least 1500 patents cover single Intel microprocessor
`InformationIndustry Association Comment at
`2/5/09 speaking in terms of hundreds or
`Software
`even thousands of components in product
`
`4Thome at 117 3/18/09 terming sheernumbers the numberone problem see also Sarboraria at
`120 3/18/09 same Phelps at 263 5/4/09 sameLuftmanat 143 213 2/12/09 Yen at 53-54
`12/5/08 noting that the sheer quantity of issued patents in IT contributes to makingit impossible to
`achieve any degree of certainty by
`clearance searches Slifer at 118 3/1 8/09 stating that Micron
`has literallythousands of potential patents to read Doyle 162 5/5/09 stating that Palms product
`arguably implicates hundreds if not thousands of patents most of which would be very hard for us to
`Industry Association Comment at 12 2/5/09
`identify from the start Computerand Communications
`2/5/09 With this myriad of
`InformationIndustry Association Comment at
`Software
`often-overlapping patents no technology businesscan review every potentially relevant patent before
`designing and commercializing new product.
`
`90
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`

`We are not qualifiedto say whether
`chip other than what it ultimatelywill do
`or not Palm infringesor the supplierof that chip infringes.115
`
`The lack of predictable vocabularies in IT arts also complicates efforts to efficiently sift
`panelist lamented theres so
`through large numbersof patents In areas such as software
`many different ways to describe similarfeatures.116 Panelistsexplained that it is impossible to
`achieve any degree of certainty by clearance searches with todays systems.117 Vague or
`stretchedclaims mightnever
`found doing any type of searching.118
`
`Finally panelists observed that high tech product cycles are very short leaving minimal
`time for conducting
`search.119 Indeed one commenter pointed out that software innovations
`evolve over period of monthsmuch more quickly than patent applications can be examined
`even in the best of circumstances.12
`
`In stark contrast patent clearance seeminglyposes few problems in the chemical and
`industries.121 The number of relevant patents is much smaller perhaps only
`pharmaceutical
`couple dozen.122 The ability to focus on so few patents is largely attributable to the clarity with
`which inventions involving small molecule chemicals can be described.123 And in
`
`5See Doyle at 225 5/5/09 Testimony from other industries indicated that for purchased components
`See Stec at 178 3/18/09 adding its
`firms often must rely on clearance performed by their suppliers
`almost impossiblefor
`to go out and understandwhat the patent landscape is for all of the various
`intricate parts that end up in vehicle
`
`6McNelis at 26 5/5/09 see also Horton at 175 3/18/09 noting that in software
`describe it in almost different way complicating automated searching
`
`of us could
`
`7Yen at 53-54 12/5/08 One panelist opined that only rough tools are available to perform searches
`Menell at 30 5/5/09
`
`8Luftman at 221 2/12/09 see also Sarboraria at 120 3/18/09 Oracle finds that patents are asserted
`that never came up through
`process
`
`very diligent
`
`against us
`
`9See Lee at 1115/5/09 cf Horton at 196 3/18/09 noting the impact of variation in product cycles
`on patent search
`
`20Michael Martin Comment at 13 5/15/09
`
`21Armitage at 120 3/19/09 stating that the notice requirement by and large is very wellmet in the
`current system Phillips at 176 3/18/09
`
`22Myers at 241-42 3/18/09 see also Armitage at 210 2/12/09 indicatingthat there are vastly more
`patents in high tech than in pharmaceuticals where somemulti-billion dollar products are covered byjust
`one or two patents
`
`23See Menell at29 5/5/09 Horton at 174 3/18/09 Hall at 264 5i4/09 Vermontat 221 4/17/09
`Dune at 17-18 5/5/09
`
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`

`very long product development period over which search can be
`pharmaceuticals there is
`staged due mainlyto the lengthyFDA testing process.124
`
`In biotechnologypanelists reported that although they face significant challenges
`effective clearance searches are the norm.125 While potentially thousands ofpatents come up on
`our searches126 testimony suggested that it is generally reasonably easy to ascertainat least
`technology mightbe.127
`the universe of potentially blocking patents for
`Moreover in biotech.
`very standardized vocabulary that is very easily
`searchable.128 As in the case of pharmaceuticals there is substantial development time during
`which the search process can be staged.129 Testimony regardingmedical device industries
`portrayed similarpicture effective clearance searches despitelarge numbers of potentially
`relevant patents where long life cycles afforded the opportunity for extensive clearance efforts13
`
`particular
`
`IV POSSIBLE NOTICEENHANCEMENTS
`
`Notice is affected by variety of patent doctrines and practices This section looks in
`number of directions for possiblenotice improvements while recognizing the trade-offs inherent
`in the analysis
`
`Cost is obviously important Resource constraints compel search for ways to elicit
`necessary information without imposingundue costs Often patent applicants are best-
`positioned to supply low-cost but very valuable enhancements
`
`Timing is another key consideration To the extent feasible earlier is better for notice
`In particular notice is more beneficialto third parties when they are still planning
`
`purposes.131
`
`24See Myersat 221 3/18/09 it can take ten years from discovery to approval
`largely to FDA safety and efficacy review
`
`for
`
`new drug due
`
`25See e.g Singer at 244 3/18/09 Norviel at 13 5/5/09 we can go through thousands of patents and
`we can figure out if theres problem or not
`
`26Shafmaster at 241 3/18/09
`
`27Durie at 17 5/5/09
`
`28Cockbum at 219 4/17/09
`
`29Shafmaster at 244-45 3/18/09
`
`30See Jensen at 243-44 3/18/09 describing medical devices as stickier products with longerlife
`cycles that give you the runwayto do the clearance search despite large numbers of potentially
`
`relevant patents
`
`31Many of the panelists emphasized the importance of receiving notice at an early date See e.g Lee at
`front-end solution makesthe most
`43 5/5/09 the earlierthe better Kunin at 137 3/19/09
`
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`their RDstrategies and before they make sunk investments that may exposethem to hold-up.132
`
`Several panelists emphasizedthe desirability of eliminatingambiguity during or promptlyafter
`examination.133 Accordingly many of the suggested improvements look to the examination
`process and the handling of applications within the PTO rather than to litigation.134
`
`Trade-offs between notice and scope pose particularly thorny issues Insisting on very
`specific explicit writtendescriptions requiringgreat precision when evaluating claim
`definiteness even confining applicantsto original published claims all might give third parties
`better notice but may not fully protect all that applicantshave invented This section highlights
`these trade-offs to afford better understanding of their notice implications
`
`Divergence in the extent and nature ofnotice problems among industries also poses
`challenges This section looks for ways to improve notice in problem areas without impairing
`the patent systemelsewhere and without sacrificing the benefits of unitarypatent system with
`doctrinesapplicable across all technologies and industries
`
`With these guideposts in mind this section considers in sequence
`possible steps for
`in particular third party competitors and potential users of
`improvingthe ability of the public
`
`to understand existing claims
`the technology
`ability to foresee evolving claimsand
`possible steps for improvingthe publicsability to sift
`through multitude ofpatents and patent applications
`
`possible steps for improvingthe publics
`
`sense Rea at 141 3/19/09 as early as possible id at 223 3/19/09 Dune at 44-45 5/5/09
`Schultz at 70-715/5/09 Schwartz at 15 3/19/09 the longeryou dont know what the claimis going
`to cover the more trouble you are in But cf Armitage at 186 3/19/09 cautioning that you
`understand claim in context Messinger at 222 3/19/09 courts have recognized that its very hard
`to do claim construction without an accused product
`
`32See e.g Cotropiaat 136 3/19/09 arguing that front-end solutions are needed if the concern is
`impact on RD investment decisions Lee at 44 5/5/09 contending that dealing with inadvertent
`infringementafter businesses have invested
`lot of money and product has launched is tremendous1y
`costly and
`disservice to the public and to subsequent
`inventors
`
`33See e.g Cotropiaat 125-26 3/19/09 early resolution of ambiguityhelps everyone not just the
`litigants Phillips at 177 3/1 8/09 terming absence of mechanism short of litigation for testing what
`patent really covers fundamental failing. of the U.S patent system
`
`34A few panelists reasoned that because most patents never become economically significant an
`efficient process would first sort out those that do The few that prove significant could then receive
`special attention ensuring their validity and clarifying their scope See Burk at 415/5/09
`there needs
`to be somesorting processto figure which ones you want to fight aboutBadenoch at 112-13 2/12/09
`Lemley RationalIgnorance at the Patent Office 95 Nw REV 1495 1497
`see generallyMark
`2001 arguing that it is much cheaper to make detailed validity determinations in the few cases in which
`patents are asserted against competitors than to expend resources examining patents that will never be
`heard from again The arguments strength mayvary with the relevant costs for notice improvements
`that require relatively little expense it likely is less telling
`
`93
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`Improving the Abilityto Understand Existing ClaimsIndefiniteness
`
`Background and Hearing Record
`
`Section 112 second paragraph of the Patent Act 35 U.S.C 112 states the role of patent
`claims
`
`The specification shall conclude with one or more claims particularly pointing out
`and distinctly claiming the subject matter which the applicant regards as his
`
`invention.135
`
`Claimsthat do not conform to this statutory requirement are invalid on groundsof
`indefiniteness
`
`The Supreme Court has long recognized that prohibitingindefinite claims serves vital
`notice function
`
`The statute seeks to guard againstunreasonable advantages to the patentee and
`disadvantages to others arising from uncertainty as to their rights The inventor
`must informthe public during the life of the patent of the limits of the monopoly
`asserted so that it maybe known which features may be safelyused or
`manufacturedwithout
`license and which may not.136
`
`zone of uncertainty which enterprise and experimentation
`The Court subsequently elaborated
`may enter only at the risk of infringement claims would discourage invention only little less
`foreclosureof the field.137
`than unequivocal
`
`particularity so that
`
`The Court of Customsand Patent Appeals and the Federal Circuit in its earlydecisions
`frequently spoke in similarterms Thus CCPAopinion found claims definite because they do
`define the metes and bounds of the claimed invention with
`reasonable degree of precision and
`skilled in the art would have no difficulty determining whether or
`138
`
`not
`
`particular collectionof components infringed
`
`Likewise many of the earlyFederal
`
`common informalusage applies the
`35Although the statute refers to claims as part of the specification
`term specification to the applications written description of the invention as distinguished from the
`claims See In re Dossel 115 F.3d 942 945 Fed Cir 1997 This chapter adoptsthat convention
`
`36General Elec Co Wabash Appliance Corp 304 U.S 364 369 1938 discussing predecessorto
`indefiniteness statute footnotes and internal citation omitted
`
`the current
`
`37United Carbon Co Binney
`
`Smith Co 317 U.S 228 236 1942
`
`re Venezia 530 F.2d 956 958-59 C.C.P.A 1976
`
`94
`
`K8001DC07723674
`
`

`

`Circuit opinions framed the indefiniteness discussion in terms of or similarto whether claim
`in the art of its scope.139
`reasonably apprisesthose of skill
`
`While continuing to describe the ultimateissueusing notice-oriented language regarding
`what those with skill in the art would understand14 the Federal Circuitshifted focus with its
`2001 Exxon Research opinion Observing that courts frequently deal with close questions of
`claim should not be indefinite merely
`claim constructionthe Federal Circuitreasoned that
`because it poses such an issue The test for indefiniteness the court concluded should not be
`whether claims are plain on their face but rather whether they are amenableto construction
`however difficult that task may be.141 The Federal Circuitcontinued
`
`If claim is insolublyambiguous and no narrowingconstruction can properly be
`adopted we have held the claim indefinite If the meaning of the claim is
`discernible even though the task may be formidable and the conclusion may be
`one over which reasonable persons will disagree we have held the claim
`sufficiently clear to avoid invalidity on indefiniteness grounds.142
`
`Byfinding claims indefinite only if reasonable efforts at claim construction prove futilethe
`court explainedwe accord respect to the statutory presumptionof patent validity and we
`protect the inventive contribution of patentees even when the drafting of their patents has been
`less than ideal.143 Numeroussubsequent Federal Circuitopinions have repeated the insolubly
`ambiguouslanguage applying it with varying degrees of rigor.144
`
`CardinalChem
`re Warmerdam33 F.3d 1354 1361 Fed Cir 1994 see e.g Morton Intl Inc
`Co F.3d 1464 1470 Fed Cir 1993 finding claimsindefinite because they were not sufficiently
`precise to permit potential competitorto determinewhether or not he is infringingAmgen
`Chugai
`Pharm Co 927 F.2d 1200 1217 Fed Cir 1991 ShatterproofGlass Corp
`Libbey-Owens Ford Co
`758 F.2d 613 624 Fed Cir 1985
`
`40See Exxon Research Engg Co United States 265 F.3d 1371 1375 Fed Cir 2001 stating If
`one skilled in the art would understandthe bounds of the claim when read in light of the specification
`then the claim satisfies section 112 paragraph 2.
`
`411d
`
`421d
`
`431d citation omitted
`
`Shure Inc 600 F.3d 1357 Fed Cir 2010 Ultimax Cement
`44See e.g Hearing Components Inc
`Mfg Corp CTS CementMfg Corp 587 F.3d 1339 1350-53 Fed Cir 2009 Praxair Inc ATMI
`3Com Corp 458 F.3d 1310 1323 Fed
`Inc 543 F.3d 1306 1319-21 Fed Cir 200