Patent Law

Requisite Clarity

By Gary Odom and Jordan Kuhn

In Bilski, the rogue CAFC ruled on the wrong grounds, and in the process warped the law, by setting in stone what were intended as guidelines. To afford case-by-case consideration, a court writes itself wiggle room. Instead, the CAFC tends to sew itself straight-jackets. To invalidate Bilski's claim, all SCOTUS need do is reaffirm the definiteness requirement, and then correct the CAFC's errant way regarding patentable process subject matter.

What the Supreme Court needs to do with Bilski, reversing the CAFC on two fronts, is insist on "claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention," and again clarify the signposts of patentability, while removing the blocks that the CAFC had cast in stone.

In Bilski, the CAFC took clues to patentability and rendered them exclusive metrics. ("Transformation and reduction of an article 'to a different state or thing' is the clue to the patentability of a process claim that does not include particular machines." - Diamond v. Diehr, 450 U.S. 175 (1981)) The law requires nothing more than a "new and useful process," or its "improvement thereof". In KSR, the Supreme Court chided the CAFC about its rigidity. Another reminder is in order, as old habits die hard. A very long-standing doctrine, Congress and SCOTUS have consistently left patentable subject matter open-ended with regard to technology, including process claims, whilst rightfully shutting the door to "laws of nature, natural phenomena, and abstract ideas." Patentability needs no further circumscription.

On the other hand, the CAFC has been far too lenient in enforcing indefiniteness, practically eviscerating the statute's requirement for clarity. From the CAFC in Praxair v. Advanced Technology Materials (2008) -

The second paragraph of 35 U.S.C. § 112 requires that the specification of every patent must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." This requirement serves a public notice function, ensuring that the patent specification adequately notifies the public of the scope of the patentee's right to exclude. See Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338 (Fed. Cir. 2003). A claim satisfies the definiteness requirement of § 112 "[i]f one skilled in the art would understand the bounds of the claim when read in light of the specification." Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). A claim will be found indefinite only if it "is insolubly ambiguous, and no narrowing construction can properly be adopted . . . ." Id. On the other hand, "[i]f 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." Id.

Neither the Congress nor the Supreme Court had such laxity in mind. From the Supreme Court's Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., Ltd. (2002) -

The patent laws "promote the Progress of Science and useful Arts" by rewarding innovation with a temporary monopoly. U.S. Const., Art. I, §8, cl. 8. The monopoly is a property right; and like any property right, its boundaries should be clear. This clarity is essential to promote progress, because it enables efficient investment in innovation. A patent holder should know what he owns, and the public should know what he does not. For this reason, the patent laws require inventors to describe their work in "full, clear, concise, and exact terms," 35 U.S.C. § 112 as part of the delicate balance the law attempts to maintain between inventors, who rely on the promise of the law to bring the invention forth, and the public, which should be encouraged to pursue innovations, creations, and new ideas beyond the inventor's exclusive rights. Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489 U.S. 141, 150 (1989).

In its Bilski decision, the Supreme Court needs to right the definiteness requirement to "full, clear, concise, and exact terms," and remind "that Congress intended statutory subject matter to 'include anything under the sun that is made by man.'"

This is a companion piece to Definitely Not.

Full post as published by The Patent Prospector on June 29, 2009 (boomark / email).