In Interval Licensing, LLC v. AOL, Inc. (Fed. Cir. Sept. 10, 2014), the Federal Circuit invalidated a patent claim as being indefinite under a new standard set forth by the Supreme Court of the United States in Biosig v. Nautilus (S. Ct. April 28, 2014). Interval Licensing is instructional not just for evaluating indefiniteness under the new standard, but also on how to write claims for a patent application that contains two or more embodiments of the invention.
Before Nautilus, it was difficult to invalidate a patent based on the definiteness requirement that the patent claims “particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.” The reason it was so difficult was that the Federal Circuit had set the bar for evaluating indefiniteness very high. Previously, the claim need only be interpreted so that the court can ascribe some meaning to the terms of the patent’s claims. A claim was indefinite and invalid only if the claim was “insolubly ambiguous” or not “amenable to construction.” (See Takeda v. Zydus).
In Nautilus, the Supreme Court rejected that standard and lowered the bar for finding a claim indefinite. The Supreme Court held that a patent claim is indefinite if the claim fails to inform those skilled in the art about the scope of the invention “with reasonable certainty.” By doing so, the Supreme Court lowered the standard to invalidate an ambiguous term from being “insolubly ambiguous” to “reasonable certainty.” It is now no longer acceptable that the specification be merely capable of informing one as to some possible meaning of a claim term, but instead it must inform “with reasonable certainty.”
Interval Licensing is the first case where the Federal Circuit applied the holding of Nautilus and provided an example of what an indefinite claim looks like under the new Supreme Court standard. In Interval Licensing, the claims were directed to use of the unused real estate on a person’s computer screen. The specification described two different embodiments. In a first “screen saver” embodiment, the patent application contemplated use of the entire screen if the computer remained idle for a period of time and displayed custom content instead of a generic screen saver. In a second “wall paper” embodiment, the patent application used areas of the screen other than the primary viewing or interaction area of the screen (e.g., background area) to display the custom content.
The claims required that custom content be displayed on the screen in an “unobtrusive manner that does not distract the user.” The court found that term was “purely subjective” and then looked to the patent and prosecution history to see if an objective standard was provided to define that term to avoid indefiniteness. The plaintiff relied on the definition given in one example of the wallpaper embodiment to argue the claim was definite while the defendant relied on conflicting meanings given in both the wallpaper and screen-saver embodiments to argue the claim was indefinite. The Federal Circuit could not determine whether one or both of the embodiments should be used to construe the phrase based on the prosecution history and the specification itself, found no objective criteria for the subjective claim requirement and refused to accept one example out of a long specification as defining the claim term. For this reason among others, the Federal Circuit found that all claims using the “unobtrusive manner” phrase to be indefinite, and thus those claims including that phrase invalid.
Under the old rule, the “unobtrusive manner” claim language may not have been “insolubly ambiguous” and may have been “amenable to construction.” The patent application and prosecution history did provide guidance as to “some” meaning of the term, and thus the claim could have avoided the indefinite attack. A court could ascribe meaning to the term by choosing to use one example from one embodiment as urged by the plaintiff to ascribe some meaning to the phrase. By comparing the potential results under the old rule and holding of the case under the new rule, the Federal Circuit appears to have lowered the bar for finding claims invalid for being indefinite as instructed by the Supreme Court.
In light of this new standard for indefiniteness, if a patent application includes two or more different embodiments but has claims written in such a way that it is unclear which embodiments should be used to construe a claim term or provide meaning to a particular claim term, then the claims including that term may be invalid for being indefinite.
One claiming strategy to guard against indefiniteness is to present an omnibus claim broad enough to cover two or more of the different embodiments and then add dependent claims that separately cover each of the embodiments. If the omnibus claim is found to be indefinite, hopefully the dependent claims will provide enough definition to survive such an attack. Another claiming strategy would be to include an omnibus claim and also include other separate independent claims directed to each of the preferred embodiment. However, presenting an independent claim for each of the embodiments may be cost prohibitive if there are too many different embodiments. A third option would be to use a “means-plus-function” claim under 35 U.S.C. §112 ¶(f), which encompasses every embodiment that the patent specification identifies as performing the claimed function, recognizing that this type of claim has other issues and limitations. Another further option would be to expressly define the claim term using an objective criteria with a close review of the definition and criteria to ensure it is likely to be definite and not overly narrowing.
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