Procedural Mechanisms for Invalidating Patent Claims Due to Indefiniteness
One of the defenses available to an accused infringer is that the asserted patent claims are invalid for indefiniteness. The Patent Statute requires that the claims of a patent “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 (b) (formerly 35 U.S.C. § 112, ¶ 2). Patent claims that fail to meet this standard are subject to invalidation in an infringement lawsuit.
It is well-established that “indefiniteness is a question of law and in effect part of claim construction.” ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 2012). This rule suggests that accused infringers can, and should, raise indefiniteness challenges during claim construction proceedings. As a strategic matter, defendants generally favor raising indefiniteness during claim construction. Because such proceedings often occur before substantial discovery has begun, a winning indefiniteness defense may end the case before the typically large fees and expenses associated with discovery have been incurred.
Nevertheless, the Federal Circuit has never held that indefiniteness must be adjudicated during claim construction. As a result, some district courts will only adjudicate the issue if it is raised in a motion for summary judgment under Fed. R. Civ. P. 56. See Sipco, LLC v. Abb, Inc., 2012 U.S. Dist. LEXIS 106659 at *76 (E.D. Tex. 2012) (“The Court has a longstanding practice of addressing any indefiniteness issues as part of a separately filed motion for summary judgment to be heard concurrently with claim construction arguments at the claim construction hearing”). Summary judgment motions are typically much more involved and expensive than claim construction briefing, so requiring a summary judgment motion increases the cost pursuing an indefiniteness defense. Moreover, some courts refuse to hear summary judgment motions until discovery is closed. Int’l Dev. LLC v. Richmond, 2010 U.S. Dist. LEXIS 120133 at *19, unpublished, (D.N.J. 2010) (“practical considerations . . . militate against determining indefiniteness prior to the end of all discovery”); Pharmastem Therapeutics, Inc. v. Viacell, Inc., 2003 U.S. Dist. LEXIS 877 at *2, n.1. In those courts, indefiniteness provides no strategic advantage over other defenses in the sense that it does not provide a route to an early, favorable resolution of the case. The patent holder maintains the ability to use the painful and burdensome discovery process as leverage to force a settlement, notwithstanding the merits of its claims.
The Federal Circuit has considered indefiniteness rulings arising out of both claim construction and summary judgment proceedings, and by implication, seems to have tacitly approved using either procedural vehicle to adjudicate the issue. ePlus, Inc., 700 F.3d at 517. This month, the Federal Circuit affirmed a district court judgment of indefiniteness which arose out of claim construction proceedings. Interval Licensing, LLC v. AOL, Inc., et al. (Docket Nos. 2013-1282, -1283, -1284, -1285) (Fed. Cir. September 10, 2014). Thus, at present, it appears that the district courts are free to adopt the procedure of their choice. In ePlus the Court held that raising the issue during claim construction or summary judgment preserves the issue for appeal. Id.
However, there is a Federal Circuit opinion that complicates the issue. In BJ Servs. Co. v. Halliburton Energy Servs., 338 F.3d 1368 (Fed. Cir. 2003), the Court held that “[l]ike enablement, definiteness too, is amenable to resolution by the jury where the issues are factual in nature”. Id. at 1372 (emphasis added). Enablement is an issue of law but is decided based on a list of established factual findings that can be made by a jury and used by the Court to make the ultimate legal determination as to whether claims are enabled. However, BJ Servs. does not indicate what particular determinations a jury should be allowed to make in connection with an indefiniteness inquiry. We are aware of one district court which apparently relies on BJ Servs. in continuing to submit indefiniteness to the jury.
In our June 24, 2014 blog, we reported the Supreme Court’s decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). Nautilus adopted a “reasonable certainty” standard for indefiniteness which should make it easier to invalidate patent claims than the “insolubly ambiguous” standard that was previously used. However, the leverage that Nautilus may provide defendants will depend on the procedural vehicle by which indefiniteness can be raised. One way of addressing the current complaints about “patent trolls” and “junk patents” is to adjudicate potentially dispositive defenses–like indefiniteness–before substantial discovery begins. This would reduce the economic pressure for accused infringers to settle meritless cases so they can avoid incurring large legal fees.