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March 30, 2015 Practice Points

Is there Reasonable Certainty about the Standard of Review for Indefiniteness?

The statutory presumption of validity requires proof that patents are invalid by clear and convincing evidence.

By Jeanne M. Heffernan and Leslie M. Schmidt

The statutory presumption of validity requires proof that patents are invalid by clear and convincing evidence. Microsoft Corp. v. i4i Ltd. P'ship, 131 S. Ct. 2238, 2246, 2252 (2011). The federal circuit's now-defunct "insolubly ambiguous" test incorporated this presumption into the indefiniteness analysis. See Honeywell Int'l, Inc. v. Int'l Trade Comm'n, 341 F.3d 1332, 1338-39 (Fed. Cir. 2003) ("Because a claim is presumed valid, a claim is indefinite only if the claim is insolubly ambiguous, and no narrowing construction can properly be adopted." (citations and internal quotation marks omitted)). The court reasoned such a test was particularly apt for indefiniteness because of the latter's roots in claim construction. Haemonetics Corp. v. Baxter Healthcare Corp., 607 F.3d 776, 783 (Fed. Cir. 2010) ("[B]ecause claim construction frequently poses difficult questions over which reasonable minds may disagree, proof of indefiniteness must meet an exacting standard." (citations and internal quotation marks omitted)).

In Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court rejected the "insolubly ambiguous" test and replaced it with the "reasonable certainty" test. Id. at 2129. The Court dismissed concerns that eliminating the "insolubly ambiguous" test would also eliminate the presumption of validity in indefiniteness analyses. See id. at 2130 n.10 ("[The] presumption of validity does not alter the degree of clarity that § 112[(b)] demands from patent applicants; to the contrary, it incorporates that definiteness requirement by reference." (citation omitted)).

The federal circuit's application of the "reasonable certainty" test in recent cases lends credence to those concerns. In three of the federal circuit's four precedential post-Nautilus indefiniteness decisions, the court departs from its pre-Nautilus analysis, which framed the indefiniteness analysis with the presumption. Compare Eidos Display, LLC v. AU Optronics Corp., No. 2014-1254, 2015 WL 1035284, at *4 (Fed. Cir. 2015); DDR Holdings, LLC v., L.P., 773 F.3d 1245, 1260 (Fed. Cir. 2014); Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1371–73 (Fed. Cir. 2014) with Honeywell, 341 F.3d at 1338–39. Instead, the court construes the disputed terms without expressly acknowledging that the claims are presumed to be valid and thus should be presumed to have some meaning absent clear and convincing evidence to the contrary.

For example, in Interval Licensing, the federal circuit found that the term "unobtrusive manner" was "highly subjective," i.e., based on "any one person's opinion," because "the claim language offer[ed] no objective indication of the manner in which content images are to be displayed to the user." 766 F.3d at 1371. After reviewing the intrinsic evidence, the court concluded the evidence failed to "provide a reasonably clear and exclusive definition" for "unobtrusive manner," thus "leaving the facially subjective claim language without an objective boundary." Id. at 1373. The court declared the term indefinite without referencing the presumption of validity or the clear-and-convincing standard. Compare id. with Haemonetics, 607 F.3d at 783 ("An accused infringer must thus demonstrate by clear and convincing evidence that one of ordinary skill in the relevant art could not discern the boundaries of the claim based on the [intrinsic evidence]." (emphasis added)).

DDR Holdings and Eidos similarly fail to express the presumption of validity in their analyses. See Eidos, 2015 WL 1035284, at *4; DDR Holdings, 773 F.3d at 1260. The omission is particularly noteworthy in DDR Holdings, which specifically references the clear-and-convincing evidentiary standard for anticipation, 773 F.3d at 1252 ("Invalidity by anticipation must be proven by clear and convincing evidence." (emphasis added)), but makes no parallel statement for indefiniteness.

By contrast, Warsaw Orthopedic, Inc. v. NuVasive, Inc., Nos. 2013-1576, 2013-1577, 2015 WL 859503 (Fed. Cir. 2015), relied on the clear and convincing evidence standard to find no indefiniteness. The claim at issue recited the dimensions of a translateral spinal implant in relation to the width, depth, and separation of vertebrae. Id. at *3. Although the claim had a "relative nature," the parties had stipulated that "[t]he average dimensions of the human vertebrae are well-known…." Id. The court held that "NuVasive failed to establish, by clear and convincing evidence, that human anatomy varies so significantly that reliance on the well-known dimensions of human vertebrae makes the claims indefinite." Id.

Some of the federal circuit's post-Nautilus indefiniteness decisions bring into question at least the practical relevance of the presumption of validity in the indefiniteness analysis. We suspect this issue will gain more attention as the federal circuit decides more indefiniteness cases.

Keywords: intellectual property, litigation, reasonable certainty, indefiniteness, Nautilus

Jeanne M. Heffernan and Leslie M. Schmidt are with Kirkland & Ellis LLP in New York, New York.

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Jeanne M. Heffernan and Leslie M. Schmidt – March 30, 2015