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NAUTILUS: A NEW STANDARD FOR DEFINITE CLAIMING*
Harold C. Wegner**
I. OVERVIEW 2
II. PUBLIC POLICY: TWO SIDES OF THE COIN 3
III. AVOIDABLY (VS. INSOLUBLY) AMBIGUOUS CLAIMING 5
IV. CONCLUSION 6
APPENDIX:
THE LORD LOREBORN TEST FOR 112(B) INDEFINITENESS:
AN ALTERNATIVE TO INSOLUBLY AMBIGUOUS
_______________________
* This paper is a background paper for the Second Annual Naples Midwinter Patent Experts Conference,Naples, Florida, February 10-11, 2014, at the Naples Hilton. The paper considers the standard for claim
definiteness that is under review by the Supreme Court which on February 10, 2014, granted certiorari inNautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369. The appendix had been a separatepaper, published prior to the grant of certiorari.This paper represents the personal views of the author and does not necessarily reflect the views of anycolleague, organization or client thereof.
This paper: January 12, 2014.
This paper was written without prior consultation with Philip Warrick, one of the participants at theNaples Conference (who is involved in theNautilus case) or the Hon. Roger Hughes (author of a decisioncited in this paper).
** Foley & Lardner LLP, Washington, D.C. Biographical information is found on the last page of theAppendix.
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Wegner,Nautilus: A New Standard for Definite Claiming
2
I. OVERVIEW
InNautilus, Inc. v. Biosig Instruments, Inc., Supreme Court No. 13-369,
opinion below, Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 900 (Fed.
Cir. 2013)(Wallach, J.), petitioner reawakens the ghost of United Carbon Co. v.
Binney & Smith Co., 317 U.S. 228 (1942), the last major Supreme Court case
where claims were invalidated for indefiniteness under what today is 35 USC
112(b).
Under the Federal Circuit case law even a claim deliberately drafted with
ambiguities to cloud the true scope of protection is saved from invalidity unless the
claim is insolubly ambiguous. Petitioner asks the Supreme Court in the first
Question Presented:
Does the Federal Circuits acceptance of ambiguous patent claims with multiple
reasonable interpretationsso long as the ambiguity is not insolubleby a courtdefeat the statutory requirement of particular and distinct patent claiming?
It is likely that the Supreme Court will reverse the Federal Circuit inNautilus.
Thats the easy part. Then, the harder points. What standardif anyshould be
set for determining claim particularity? What test will the Federal Circuit create for
claim particularity within the ambit of whatever guidance is given by the Supreme
Court?
The starting point is a recognition that there are two competing elements.
First, the system must permit a certain claiming latitude to inventors, given the
difficulties of language to precisely define the scope of technological innovation.
Second, of course, there is the need for clear boundaries of protection to foster
competition and encourage future innovation. See III,Public Policy: Two Sides
of the Coin.
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Wegner,Nautilus: A New Standard for Definite Claiming
3
The Federal Circuit has developed a unique test for determining whether the
patentee has provided claims with sufficient particularity: If there is an ambiguity
in the claim the threshold of invalidity is reached only if the claim is insolubly
ambiguous. To the contrary, under Commonwealth case law dating back nearly
one full century and as manifested in Canadian opinions, there is a much lower
threshold: Claims are invalidated where they are avoidablyambiguous. See
III, Avoidably (versus Insolubly) Ambiguous Claiming
II. PUBLIC POLICY: TWO SIDES OF THE COIN
There are manifestly two sides to the coin, both important. On the one hand,
it remains important for the judicial system to encourage innovation by providing
relatively certain patent protection for the inventor freeas much as possible
from arcane rules and procedural obstacles to sustain such patent rights. The
Court inExxon Researchjustifies its obviously pro-patentee bias by the statement
that [b]y finding claims indefinite only if reasonable efforts at claim construction
prove futile, we accord respect to the statutory presumption of patent validity,see
N. Am. Vaccine, Inc. v. Am. Cyanamid Co., 7 F.3d 1571, 1579 (Fed. Cir. 1993),
andwe protect the inventive contribution of patentees, even when the drafting of
their patents has been less than ideal.Exxon Research & Eng'g Co. v. United
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)(emphasis added).The other side of the coin is seen from nineteenth century case law that
focuses on the need for clear claim boundaries to fosterfurther innovation.
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Wegner,Nautilus: A New Standard for Definite Claiming
4
The current standard for patent claims under what is now 35 USC 112(b)
can be traced to the second half of the nineteenth century. Then, the United States
developed a mandatory system of patent claims to define the metes and bounds of
protection.
The policy considerationsand the need to point out clear boundaries of
protection through such claimswas pointed out inMerrill v. Yeomans,a
contemporaneous opinion of the Supreme Court that explains this evolution of the
law:
The growth of the patent system in the last quarter of a century in this country has
reached a stage in its progress where the variety and magnitude of the interests
involved require accuracy, precision, and care in the preparation of all the papers
on which the patent is founded. It is no longer a scarcely recognized principle,
struggling for a foothold, but it is an organized system, with well-settled rules,
supporting itself at once by its utility, and by the wealth which it creates and
commands. The developed and improved condition of the patent law, and of the
principles which govern the exclusive rights conferred by it, leave no excuse for
ambiguous language or vague descriptions. The public should not be deprived of
rights supposed to belong to it, without being clearly told what it is that limits these
rights. The genius of the inventor, constantly making improvements in existing
patents, a process which gives to the patent system its greatest value,should
not be restrained by vague and indefinite descriptions of claims in existing patents
from the salutary and necessary right of improving on that which has already been
invented. It seems to us that nothing can be more just and fair, both to the patentee
and to the public, than that the former should understand, and correctly describe,
just what he has invented, and for what he claims a patent.
Merrillv. Yeomans, 94 (4 Otto) U.S. 568, 573-74 (1877).
https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc1301https://www.lexis.com/research/buttonTFLink?_m=6a1b00a67bcdc2e82253bfd6915f972d&_xfercite=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b517%20U.S.%20370%5d%5d%3e%3c%2fcite%3e&_butType=3&_butStat=2&_butNum=169&_butInline=1&_butinfo=%3ccite%20cc%3d%22USA%22%3e%3c%21%5bCDATA%5b94%20U.S.%20568%2c%20573%5d%5d%3e%3c%2fcite%3e&_fmtstr=FULL&docnum=1&_startdoc=1&wchp=dGLbVzB-zSkAz&_md5=4e50832a3634d7571cf19262e3bc13018/13/2019 Nautilus Jan 13
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Wegner,Nautilus: A New Standard for Definite Claiming
5
III. AVOIDABLY (VERSUS INSOLUBLY) AMBIGUOUS CLAIMING
The two sides to the public policy debate are also recognized in the
Commonwealth countries. The Commonwealth countries have recognized both
the need for clear claim boundaries to foster competition and future research while
also honoring the rights of the inventor to gain reasonable protection where it is
difficult or impossible to draft claims with the most precise boundaries.
Whereas the Federal Circuit will invalidate a claim for violation of the
definiteness requirement of 35 USC 112(b) only if the claim is insolubly
ambiguous, the Commonwealth will invalidate a claim under a lower barwhere
the claim is avoidably ambiguous. Pfizer Canada Inc. v. Canada (Minister of
Health), [2005] F.C.J. No. 2155 (Federal Court of Canada 2005)(Hughes,
J.)(quotingNatural Colour Kinematograph Company Limited v Bioschemes
Limited(1915) 32 RPC 256, 266 (1915)(Loreborn, J.)).
The avoidably ambiguoustest has three elements as explained by Judge
Hughes in the citedPfizer Canada case:
[1] [L]anguage whichis avoidably obscure or ambiguous [invalidates the claim]
whether the defect be due to design, or to carelessness or to want of skill.
[2] Where the invention is difficult to explain, due allowance will, of course, be
made, for any resulting difficulty in the language.
[3] But nothing can excuse the use of ambiguous language when simple language
can easily be employed, and the only safe way is for the patentee to do his best tobe clear and intelligible."
(emphasis added; rephrased as shown in brackets and reformatted with paragraph
numbers added).
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Wegner,Nautilus: A New Standard for Definite Claiming
6
The Canadian (Commonwealth) approach is explained in greater detail in
the Appendix, an earlier paper entitled The Lord Loreborn Test For 112(b)
Indefiniteness: An Alternative to Insolubly Ambiguous
IV. CONCLUSION
To the extent that the Court overturns the insolublyambiguous test of the
Federal Circuit, it is important that a balanced test is created that protects the
inventor from the difficulties of claim language. Consideration should be given to
the approach taken by Judge Hughes in Canada that invalidates a claim for the
lower bar of being avoidablyambiguous.
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THE LORD LOREBORN TEST FOR 112(b) INDEFINITENESS:
AN ALTERNATIVE TO INSOLUBLY AMBIGUOUS*
Harold C. Wegner
[1] [L]anguage whichis avoidably obscure or ambiguous [invalidates theclaim] whether the defect be due to design, or to carelessness or to want of skill.
[2] Where the invention is difficult to explain, due allowance will, of course, be
made, for any resulting difficulty in the language.
[3] But nothing can excuse the use of ambiguous language when simplelanguage can easily be employed, and the only safe way is for the patentee to do
his best to be clear and intelligible."Lord Loreborn (1915)**
I. OVERVIEW 2
II. CLASHING ANALYTICAL METRICS FOR CLAIM ANALYSIS 4
III. THREE PART AVOIDABLE AMBIGUITY TEST 7
IV. INSOLUBLY AMBIGUOUS TEST INVITES GAMESMANSHIP 8
V. CONCLUSION 10
About the Author 11
*This version: UnitedCarbonDec4.pdf December 30, 2013.
**Pfizer Canada Inc. v. Canada (Minister of Health), [2005] F.C.J. No. 2155 (Federal Court of Canada
2005)(Hughes, J.)(quotingNatural Colour Kinematograph Company Limited v Bioschemes Limited(1915) 32 RPC
256, 266 (1915)(Loreborn, J.))(emphasis added; rephrased as shown in brackets and reformatted with paragraph
numbers added).
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APPENDIX: Wegner, TheLord LorebornTest
2
I. OVERVIEW
Judge Roger Hughes quotation of the Lord Loreborn test for claim
indefiniteness is only one of the more recent opinions to restate a nearly century
old standard in Commonwealth countries to determine when a claim is invalid as
indefinite. Without benefit of a test of this nature, the United States struggles to
determine when a claim should be thrown out as indefinite; fuzzy boundaries
encourage sloppy claim drafting to the detriment of the patent community.
Instead, the Federal Circuit sanctions clearly ambiguous language as long as theambiguity is not insoluble.
The Supreme Court has not directly addressed claim ambiguity in the sense
of fatal indefiniteness for the more than seventy years since of United Carbon Co.
v. Binney & Smith Co., 317 U.S. 228 (1942). It is inevitable that at some point in
the not too distant future the Court will grant certiorari to focus upon whether the
Federal Circuit test should remain the law. The only question about grant of
certiorari is when this will happen. The next opportunity for the Court to grant
review is Friday, January 10th, at its Conference when a vote may be expected as
to whether to grant review inNautilus, Inc. v. Biosig Instruments, Inc., Supreme
Court No. 13-369, opinion below, Biosig Instruments, Inc. v. Nautilus, Inc., 715
F.3d 891, 900 (Fed. Cir. 2013)(Wallach, J.), where Petitioner asks whether the
Federal Circuits acceptance of ambiguous patent claims with multiple reasonable
interpretationsso long as the ambiguity is not insoluble by a courtdefeat the
statutory requirement of particular and distinct patent claiming?
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APPENDIX: Wegner, TheLord LorebornTest
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The United States has two different lines of case law for the interpretation of
patent claims with respect to indefiniteness under 35 USC 112(b). The Supreme
Court has a zone of uncertainty test while the Federal Circuit is seemingly more
forgiving of patentee draftsmanship mistakes by concluding that claims are fatally
indefinite only if insolubly ambiguous. See II, Clashing Analytical Metrics for
Claim Analysis.
Only one court has cited with approval the middle ground solution of nearly
a full century ago inNatural Colour Kinematograph that asks whether claimlanguage is avoidablyobscure or ambiguous.Natural Colour Kinematograph
Company, 32 RPC at 266: It is no excuse that the drafting error was due to
carelessness or to want of skill; the test was relied upon in an early Ninth Circuit
opinion. Id. See III, The Three Part Test of Lord Loreborn.
A further difficulty with the insolubly ambiguous test for invalidity is that
patentees are encouraged to draft claims that come just short of meeting that
standard, yet which are unnecessarily vague and indefinite to the detriment of
competitors. See IV, Insolubly Ambiguous Test Invites Gamesmanship.
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APPENDIX: Wegner, TheLord LorebornTest
4
II. CLASHING ANALYTICAL METRICS FOR CLAIM ANALYSIS
The United States currently has two different lines of case law to determine
whether a claim is fatally indefinite under what is now 35 USC 112(b). On the
one hand, there is the United Carbon line of case law that focuses upon the zone
of uncertainty created by ambiguities in the claim language, whereas the Federal
Circuit follows theDatamize test as to whether a claim is insolubly ambiguous.
United Carbon, supra;Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342,
1347 (Fed. Cir. 2005).
A. The Supreme Court Zone of Uncertainty Test
The Supreme Court in United Carbon set forth a zone of uncertainty test
for determining whether a claim is fatally indefinite:
[T]helimits of a patent must be known for the protection of the patentee, the
encouragement of the inventive genius of others and the assurance that the subjectof the patent will be dedicated ultimately to the public.[General Elec. Co.v.Wabash Appliance Corp., 304 U.S. 364, 369 (1938).] Otherwise, a zone of
uncertaintywhich enterprise and experimentation may enter only at the risk ofinfringement claims would discourage invention only a little less than unequivocal
foreclosure of the field,United Carbon Co.v.Binney & Smith Co., 317 U.S. 228,236 (1942), and the public [would] be deprived of rights supposed to belong to it,
without being clearly told what it is that limits these rights.Merrillv. Yeomans, 94U.S. (4 Otto) 568, 573 (1877).Markman v. Westview Instruments, 517 U.S. 370,
390 (1996)(dictum)(emphasis added).
The quoted passage from United Carbon is from a longer statement:
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APPENDIX: Wegner, TheLord LorebornTest
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The statutory requirement of particularity and distinctness in claims is met only
when they clearly distinguish what is claimed from what went before in the art andclearly circumscribe what is foreclosed from future enterprise. A zone of
uncertainty which enterprise and experimentation may enter only at the risk ofinfringement claims would discourage invention only a little less than unequivocal
foreclosure of the field. Moreover, the claims must be reasonably clear-cut to
enable courts to determine whether novelty and invention are genuine. * * * While
we do not find it necessary to consider questions of novelty and invention, in theview we take of the claims in suit, a mere reading of prior art patents shows how, if
they are read with the liberality and inclusiveness claimed for those in suit, theydescribe products, if not identical, at least of confusing similarity. Whether the
vagueness of the claim has its source in the language employed or in the somewhat
indeterminate character of the advance claimed to have been made in the art is notmaterial. An invention must be capable of accurate definition, and it must beaccurately defined, to be patentable. Cf.General Electric Co. v. Wabash [Appliance
Corp., 304 U.S. 364, 372-73 (1938)] United Carbon, 317 U.S. at 236-37(footnote omitted).
B. The More Liberal Federal Circuit Approach
The Federal Circuit sustains or denies ambiguous claims under a test
expressed inDatamize: A claim is indefinite only when it is not amenable to
construction or insolubly ambiguous. Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008)(quotingDatamize, LLC v.
Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)).
The insolubly ambiguous test was recently explained in Teva v. Sandoz:
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APPENDIX: Wegner, TheLord LorebornTest
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To prove indefiniteness [under the Federal Circuit insolubly ambiguous test],
an accused infringer must demonstrate by clear and convincing evidence that oneskilled in the relevant art could not discern the boundaries of the claim based on
the claim language, the specification, the prosecution history, and the knowledge inthe relevant art.
Teva Pharms. USA, Inc. v. Sandoz, Inc.,723 F.3d 1363, 1367 (Fed. Cir.2013)(Moore, J.)(quoting Wellman, Inc. v. Eastman Chem. Co., 642 F.3d 1355,1366 (Fed. Cir. 2011)).
As noted in the opinion of the Federal Circuit in theNautilis case now at the
Supreme Court, a claim may pass 112(b) muster even where its scope is notplain on [its] face, the task to resolve the scope is formidable and requires
some experimentation andwhere in the end reasonable persons will disagree:
[W]e have not insisted that claims be plain on their face in order to avoid a
determination of invalidity for indefiniteness. Exxon [Research & Eng'g Co. v.
United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001)]. 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 claimsufficiently clear to avoid invalidity on indefiniteness grounds.Id. In addition,
** * the fact that some experimentation may be necessary to determine the scope
of the claims does not render the claims indefinite.Id. at 1379.
Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 901-02 (Fed. Cir.
2013)(Wallach, J.)
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APPENDIX: Wegner, TheLord LorebornTest
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III. THE THREE PART TEST OF LORD LOREBORN
The noted Canadian jurist, Roger Hughes, points to [t]hebedevilling of the
law by the ghosts of the[ ] earlier, pre-claim, cases [which] is evident in the cri de
coeurof Lord Loreburn inNatural Colour Kinematograph Co. Ltd. v. Bioschemes
Ltd, (1915) 32 R.P.C. 256, 266 (H.L.) where he speaks of counsel shaping and re-
shaping a claim with references to the specification and other evidence[.]Pfizer
Canada Inc. v. Canada (Minister of Health),[2005] F.C.J. No. 2155 (Federal
Court of Canada 2005)(Hughes, J.).
In essence, Lord Loreborn sets forth a three part test to determine whether a
claim is fatally ambiguous:
It is the duty of patentee to state clearly and distinctly, either in direct words or by
clear and distinct reference, the nature and limits of what he claims.
[1] If [the patentee] uses language which, when fairly read, is avoidably
obscure or ambiguous, the Patent is invalid[.]
[2] [The conclusion of invalidity is reached] whether the defect be due todesign,
or to carelessness or to want of skill.
[3] Where the invention is difficult to explain, due allowance will, of course, bemade for any resulting difficulty in the language. But nothing can excuse the use of
ambiguous language when simple language can easily be employed, and the onlysafe way is for the patentee to do his best to be clear and intelligible.
Pfizer Canada v. Canada (quoting inNatural Colour Kinematograph, 32 R.P.C. at
266 (numbering and paragraphing added)).
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APPENDIX: Wegner, TheLord LorebornTest
8
Judge Hughes is far from a voice crying in the patent wilderness. Several
jurists have recited the test of Lord Loreborn. Imperial Chemical Industries v.
Montedison (UK) Ltd, [1995] RPC 449 (Court of Appeal 1995)(UK)(Stuart-Smith,
J.); Wake Forest University Health Sciences v. Smith & Nephew Pty Ltd, 92 I.P.R.
496, 822 (Federal Court of Australia 2011)(Dodds-Streeton, J.).
As pointed out by the Ninth Circuit in Otis Elevator, [i]t is [the]
delimitation of the extent of the monopoly which is the function of the modern
claim.Avoidable ambiguityin the delimitation may, under the modern Englishcases, invalidate the entire patent. Otis Elevator Co. v. Pacific Finance Corp., 68
F.2d 664, 667 (9th Cir. 1934)(citingNatural Colour Kinematograph)(emphasis
added).
IV. INSOLUBLY AMBIGUOUS TEST INVITES GAMESMANSHIP
The insolubly ambiguous test encourages gamesmanship in claim drafting
where patentees are able to gain claims that would be invalid under the Lord
Loreborn test but which can be figured out with difficulty and thus be sustained
because they are not insolubly ambiguous. The routine use even today of
means-defined elements in claims where there is only vague support for such
elements in the specification is a major example: What other reason does a
patentee have to employ a means-defined element in his claims.
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APPENDIX: Wegner, TheLord LorebornTest
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It is one thing to give a pass to the patentee who has difficulty drafting
claims where the invention is difficult to explain as noted by Lord Loreburn.
But it is entirely a different situation where the patentee is able to craft clear claims
but chooses instead to game the system:
* * * I think this Patent is bad from ambiguity in the Specification. There seems tobe some danger of the well known rule of law against ambiguity being in practice
invaded. Some of those who draft Specifications and Claims are apt to treat thisindustry as a trial of skill, in which the object is to make the Claim very wide upon
one interpretation of it, in order to prevent as many people as possible from
competing with the patentee's business and then to rely upon carefully preparedsentences in the Specification which, it is hoped, will be just enough to limit theClaim within safe dimensions if it is attacked in Court. This leads to litigation as to
the construction of Specifications, which could generally be avoided if at the outseta sincere attempt were made to state exactly what was meant in plain language.
The fear of a costly law suit is apt to deter any but wealthy competitors fromcontesting a Patent. This is all wrong. It is an abuse which a Court can prevent,
whether a charge of ambiguity is or is not raised on the Pleadings, because itaffects the public by practically enlarging the monopoly, and does so by a kind of
pressure which is very objectionable. * * *
I cannot see what purpose there could have been using the roundabout languagehere employed, which has provoked so much argumentative subtlety and taken up
so much time, unless the object was to hold in reserve a variety of constructions foruse if the Patent should be called in question, and in the meantime to frighten off
those who might be disposed to challenge the Patent.
Pfizer Canada v. Canada (quoting inNatural Colour Kinematograph, 32 R.P.C. at
266)(emphasis added).
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APPENDIX: Wegner, TheLord LorebornTest
10
V. CONCLUSION
Given that it has been more than seventy years since United Carbon, grant
of certiorari inNautilis v. Biosig is very far from a certain thing. What is clear,
however, is that at some point in the coming years the Court will revisit United
Carbon if the insolubly ambiguous test goes forth, unabated.
To the extent that certiorari is denied inNautilis v. Biosig this will give the
Federal Circuit additional time to work out a better solution than the extreme testof whether a claim is insolubly ambiguous before dropping the invalidity
hammer.
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APPENDIX: Wegner, TheLord LorebornTest
11
About the Author:
HAROLD C WEGNER is apartner in the international law
firm of Foley & Lardner LLP
where he focuses upon strategic
counseling and patent appellateand opinion practice.
Prof. Wegner is the former
Director of the Intellectual
Property Law Program andProfessor of Law at the George
Washington University Law
School.
His involvement with otheracademic institutions has
included service as a VisitingProfessor at Tokyo University
and as an adjunct professor atthe Georgetown University Law
Center.
Prof. Wegners patent careercommenced with service at the
U.S. Department of Commerce
as a Patent Examiner. He spent
three years as aWissenschaftliche Mitarbeiterat
the Max-Planck-Institut frGeistiges Eigentum in Munich,
and thereafter was aKenshuin atthe Kyoto University Law
Faculty.
Prof. Wegner holds degreesfrom Northwestern University
(B.A.) and the Georgetown
University Law Center (J.D.).
This paper represents the
personal opinions of the authorwhich do not necessarily reflect
the views of any colleague,
organization or client thereof.
hwegner@foley.
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