Relative Terms Sufficient For Reasonable Certainty

• Published date: 25 April 2022
• Subject Matter: Intellectual Property, Litigation, Mediation & Arbitration, Patent, Trials & Appeals & Compensation
• Law Firm: Finnegan, Henderson, Farabow, Garrett & Dunner, LLP
• Author: Ms Caitlin E. O'Connell, Adriana L. Burgy, Melanie Magdun, Angeline Premraj, Barbara C. McCurdy, Stacy Lewis and Thomas L. Irving

Holding

In Niazi Licensing Corp. v. St. Jude Med. S.C., Inc., No. 21-1864 (Fed. Cir. Apr. 11, 2022), the Court of Appeals for the Federal Circuit ("Federal Circuit") reversed the district court's holding that the claim terms "resilient" and "pliable" were indefinite. The Federal Circuit remanded the case to resolve the infringement issue and any remaining invalidity defenses. While the Federal Circuit addressed several other issues, this post analyzes the portion of the opinion related to the indefiniteness issue.

Background

Niazi sued St. Jude for infringement of U.S. Pat. No. 6,638,268 ("the '268 patent") directed to a double catheter for cannulating the coronary sinus without significant manipulation. Representative claim 1 reads:

1. A double catheter, comprising: an outer, resilient catheter having shape memory and a hook shaped distal end configured for cannulation of the coronary sinus with at least one curved bend; an inner, pliable catheter slidably disposed in the outer catheter and of greater length than the outer catheter so that a distal end portion of the inner catheter can be extended or retracted from a distal end opening of the outer catheter to vary the overall length of the double catheter ....

Federal Circuit

Under the Supreme Court standard from Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. 898, 901 (2014), a claim must inform one of ordinary skill in the art with "reasonable certainty" as to the scope of the claim. Id. at *9. The question is "whether the use of descriptive phrasing in the claim results in a claim that 'fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.'" Id. at *11 (quoting Nautilus, 572 U.S. at 901). To answer this question, the court must consider whether "the intrinsic record'the patent's claims, written description, and prosecution history 'along with any relevant extrinsic evidence" provides or help identifies the necessary objective boundaries for claim scope. Id. at *14.

According to the Federal Circuit in this case, the terms "resilient" and "pliable" are broad, but not uncertain. Id. at *14.

With regards to the term "resilient," the Federal Circuit based its decision on other claim language ("shape memory," "sufficient stiffness," and exemplary resilient materials recited) and the description in the specification. Id. at *14-15. The Federal Circuit concluded that in light of this guidance, "a person of ordinary skill reading the claims and written...