Recently, there has been a push for clarity in patents because non-practicing entities and patent trolls have been accused of taking patents with ambiguous claim terms and construing those ambiguous terms to cover things beyond what is disclosed in the patent. Since patent litigation costs are very high and even prohibitive, many businesses would rather settle than fight. The victims of such lawsuits say such tactics are unfair, while the patent owners say their actions are authorized by law and thus cannot be unfair. The following case illustrates an example of how the courts and Patent Office are encouraging patent applicants to refine the clarity of the claims and the scope of patent protection afforded under a patent at the examination stage which has the effect of reducing enforcement of dubious patents with ambiguous claims at the litigation stage.
In In re Packard (Fed. Cir. 2014), the examiner rejected the language of newly added claims for a coin holder as indefinite and the Patent Trial and Appeal Board had affirmed that rejection for indefiniteness. The Applicant argued that the claims were not indefinite and brought the case up for appeal. The patent Applicant argued on appeal that unless the claims were insolubly ambiguous they should not be rejected as indefinite.
The Appellate Court affirmed the Examiner’s and the Board’s decision that the claims were indefinite. The Appellate Court reasoned that since the Examiner provided an explanation as to why the language was unclear, the applicant should have taken the opportunity amend the claims to address the Examiner’s concerns. The standard by which the claims are determined to be sufficiently clear or unclear before the USPTO is much higher compared to when the claims are presented during litigation because the claims are not presumed valid during litigation, but are presumed to be both valid and not indefinite during litigation. Moreover, during the examination stage, the Applicant has an opportunity to amend the claims to bring clarity to the claim language but the right to change the claim language is not available during litigation.
For these reasons, the court held that “when the USPTO has initially issued a well-grounded rejection that identifies ways in which language in a claim is ambiguous, vague, incoherent, opaque, or otherwise unclear in describing and defining the claimed invention, and thereafter the applicant fails to provide a satisfactory response, the USPTO can properly reject the claim as failing to meet the statutory requirements of §112(b) [for indefiniteness]. A satisfactory response by the Applicant to an indefiniteness rejection can take the form of a modification of the language identified as unclear, a separate definition of the unclear language, or in the appropriate case, a persuasive explanation for the record of why the language at issue is not actually unclear.”
In my opinion, the Court in many respects is giving great deference to the USPTO in that as long as the reasons for the indefiniteness rejection are well grounded, the determination of the patent examiner will be affirmed. This forces patent Applicants and would be non practicing entities and patent trolls to work out the clarity of the claims at the examination stage and further facilitates a reduction in the perceived problems of non-practicing entities and patent trolls.
It will be hard to overturn the Examiner’s determination of indefiniteness. As such, as a general rule, unless there is good reason to do so, patent applicants are likely to amend the claims to address the Examiner’s concerns and thus avoid the expense, delay and rejection that are likely to arise if they appeal the decision of the Examiner on indefiniteness. Thus, in most instances, it will be preferable to work with the Examiner instead of appealing the Examiner’s decision on indefiniteness.
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