Even when "reasonable persons will disagree" over claim meaning, it is not necessarily indefinite
In the Kinetic Concepts case (Feb. 2, 2009), the Federal Circuit confirmed a test from the 2001 Exxon case that, even though the task of claim construction may be "formidable," when the meaning is "discernible," the claim is definite.
The claim in the case addressed a method for treating a wound, and it had 2 basic steps. The first was the application of reduced pressure to the wound, and the second was maintaining the reduced pressure until "the wound has progressed toward a selected stage of healing." The first invalidity argument was that the part of the claim that described maintaining a reduced pressure until a "selected stage of healing" had been reached was indefinite because that the specification did not explain how the "selected stage" was to be determined "for particular wounds at particular times." Therefore, the argument was made, whether a wound had progressed to the "selected stage" was "wholly subjective."
In rejecting the argument, the Federal Circuit relied on examples of "selected stages" of healing in the patent's specification and a declaration from one of the inventors explaining "explaining that a doctor of ordinary skill in the art would understand how the selected stage of healing may vary from wound to wound." The court quoted on a 2001 case for the proposition that "[i]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Slip op at 17, quoting, Exxon Res. & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
A second argument was that the claim was indefinite because of a limitation that the wound show a reduction in bacterial density of at least 50%. They argued that, under the Honeywell case (Honeywell International, Inc. v. International Trade Commission, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003), the claim was indefinite because "there are several methods for measuring bacterial density, each of which may yield a drastically different result, and a person of ordinary skill in the art would not know which method to use."
The court held that Honeywell did not control because the specification disclosed a particular method of how to calculate bacterial density. Slip op. at 18.
A link to the slip opinion is below.
Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc.
A link to the Sept. 2, 2008 memorandum of the Deputy Commissioner for Patent Examination Policy (John Love) interpreting recent opinions regarding indefiniteness for the examing corps is below.
Sept 2, 2008 Memorandum of DCPEP John Love to Technology Center Directors Regarding Indefininteness Rejections
The claim in the case addressed a method for treating a wound, and it had 2 basic steps. The first was the application of reduced pressure to the wound, and the second was maintaining the reduced pressure until "the wound has progressed toward a selected stage of healing." The first invalidity argument was that the part of the claim that described maintaining a reduced pressure until a "selected stage of healing" had been reached was indefinite because that the specification did not explain how the "selected stage" was to be determined "for particular wounds at particular times." Therefore, the argument was made, whether a wound had progressed to the "selected stage" was "wholly subjective."
In rejecting the argument, the Federal Circuit relied on examples of "selected stages" of healing in the patent's specification and a declaration from one of the inventors explaining "explaining that a doctor of ordinary skill in the art would understand how the selected stage of healing may vary from wound to wound." The court quoted on a 2001 case for the proposition that "[i]f the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Slip op at 17, quoting, Exxon Res. & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001).
A second argument was that the claim was indefinite because of a limitation that the wound show a reduction in bacterial density of at least 50%. They argued that, under the Honeywell case (Honeywell International, Inc. v. International Trade Commission, 341 F.3d 1332, 1339-40 (Fed. Cir. 2003), the claim was indefinite because "there are several methods for measuring bacterial density, each of which may yield a drastically different result, and a person of ordinary skill in the art would not know which method to use."
The court held that Honeywell did not control because the specification disclosed a particular method of how to calculate bacterial density. Slip op. at 18.
A link to the slip opinion is below.
Kinetic Concepts, Inc. v. Blue Sky Medical Group, Inc.
A link to the Sept. 2, 2008 memorandum of the Deputy Commissioner for Patent Examination Policy (John Love) interpreting recent opinions regarding indefiniteness for the examing corps is below.
Sept 2, 2008 Memorandum of DCPEP John Love to Technology Center Directors Regarding Indefininteness Rejections
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