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« Limelight Networks, Inc. v. Akamai Technologies, Inc. (2014) | Main | Guest Post: Myriad -- An Obvious and Patent-Friendly Interpretation »

June 03, 2014


I think though that the Supreme Court was correct to point out that the Federal Circuit's approach of trying to find the meaning in an unclear claim did cause a 'zone of uncertainty' which was undesirable. Applicants might then be tempted to write claims with a clear portion and an ambiguous portion.

How will this decision affect, if at all, prosecution of patent applications and the standards employed by the USPTO in judging claim definiteness?

"Applicants might then be tempted to write claims with a clear portion and an ambiguous portion."

No doubt, but that temptation is checked by two additional considerations. (1) You still have to get it past the PTO before you can take your chances in court, and it is well settled law that the "insolubly ambiguous" standard *never* applied in ex parte prosecution before the PTO. MPEP 2173.02.I; In re Packard, slip op. at 20 (Plager J., concurring.) (2) In litigation, ambiguous claims are supposed to be construed to favor non-infringement. Athletic Alternatives, Inc. v. Prince Mfg., Inc., 73 F.3d 1573, 1581 (Fed. Cir. 1996); see also, 3M Innovative Props. Co. v. Tredegar Corp., 107 USPQ2d 1717, 1733 (Fed. Cir. 2013) (Plager J., concurring).

In other words, existing elements of CAFC jurisprudence were easily available to deal with any of the problems that supposedly motivated the Supreme Court's decision. If they really cared about fixing the problem, they would have seized on Judge Plager's recent work and run with it. Instead, they simply slapped the CAFC, but offered almost no guidance at all to help lower courts apply 112(b).

This is why, anymore, I wince when I see the Supreme Court grant cert on a patent issue. They almost never improve matters, even when there really is a problem in the law.

It seems to me that much of this is the inevitable result of the Legislature removing any teeth to the long established Best Mode requirement? While The patent-in-suit, U.S. Patent No. 5,337,753,certainly came up through the PTO in the times where such disclosure did have teeth and thus a desirability for such disclosure, never-the-less, reading the above reeks of struggling with putting other tools in place to deal with ambiguity, where if the best mode requirement had been available for exploring during litigation, a much more suitable and immediate result achieved (in this case at least).

Christopher Wait,

I do not think that "Best Mode" - being a subjective item in the eyes of the inventor only, never really had the teeth that you seem to think that they had.

"an ironic statement from a Court whose recent patent law decisions have bred so much confusion that even the Court having 'special expertise' in patent law has been seriously confused in attempting to apply their decisions (see the Federal Circuit's en banc opinion in CLS Bank v. Alice)."


Never were truer words spoken regarding Our Judicial Mount Olympus that continues to create utter chaos in our area of the law. Our Judicial Mount Olympus is also completely hypocritical and disingenuous when it continues to chastise the Federal Circuit for error when it too commits the same sin (or worse). Or as Jesus once said, "take the plank out of your own eye before asking your brother to remove the speck from his."

The part of the Manzo-IPLAC book quoted by SCOTUS in Nautilus was from a chapter co-authored by Prof. Josh Sarnoff of DePaul U. College of Law and me. I have written to the Court asking it to amend the citation to name us both as chapter authors. I appreciate the contributions of all of the contributing authors, particularly Kevin Noonan.

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