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Do some business method patents have a soft underbelly? Chief Justice John Roberts Jr. may have hinted “yes” during a March 29 Supreme Court oral argument when he confessed that he had struggled to understand the “computerized market” invention claimed by the patentee. “It’s not like the internal combustion engine. . . . It’s very vague,” he said. There is indeed a rule prohibiting vague patent claims, and it is written into the Patent Act itself. The statute specifies that patent claims must “particularly point out and distinctly claim the subject matter which the applicant regards as his invention.” This is known as the “definiteness” requirement. Roberts’ hint in eBay Inc. v. MercExchange and a recent decision by the U.S. Court of Appeals for the Federal Circuit (which handles all patent appeals) suggest that we may be hearing more about the definiteness requirement. Especially when it comes to the perplexities of business method patents, an indefiniteness defense to infringement suits may be the solution of the future. AN OLD WAY TO DO BUSINESS While there is no generally accepted definition of a “business method” patent — broadly, it is a patent that claims in whole or in part a method of doing business — there is general agreement that large numbers of them are heading from the Patent and Trademark Office to the courtroom as the subjects of infringement lawsuits. While patentees seek to shore up their claims, defendants look for an escape hatch. Enter the indefiniteness defense. Business method patents may be especially prone to defense challenges that a patent does not meet the definiteness requirement. As an initial matter, they often use “nontechnical” business-, marketing-, and sales-related language for which well-accepted definitions may not exist. One might question whether the language of Internet marketing, for example, is inherently any less precise than the language of the hard sciences or the mechanical arts, which have been the traditional subjects of inventions. But courts certainly have less experience with the softer language of the business world, at least when it comes to patents. Another problem arises from the sheer rush of business method patents over less than a decade. Prior to the Federal Circuit’s 1998 landmark decision in State Street Bank & Trust Co. v. Signature Financial Group Inc., the conventional wisdom was that pure business method patents were forbidden. In fact, State Street confirmed what had been PTO practice for more than 200 years. As far back as March 1799, Jacob Perkins of Massachusetts received a patent for “detecting counterfeit notes.” But until State Street, few people seemed to notice what the PTO had actually been doing. What precipitated the State Street decision and, consequently, shook an old practice out of the doldrums was the advent of cheap, universal computing. Business methods long used in the “real world” could now be implemented by means of computer algorithms or computer-managed systems in e-commerce. After State Street put business method patents on the map, the PTO received a flood of such applications. The burden became so great — and the concerns that business method patents were being issued too easily grew so loud — that the PTO ultimately promulgated special rules to deal with certain kinds of business method patents. Patent examiners are now trained, for example, to use special search criteria for business method patents. They have access to several hundred databases to help locate relevant prior art. And nonetheless, the PTO has proceeded to issue astounding numbers of patents in classes such as modern business data processing (class 705) and methods of teaching (class 434). It is not just that in all the excitement some indefinite claim language may have slipped through the cracks. The rush to the PTO, coupled with the difficulties in finding the most relevant “prior art” from which patent applicants must distinguish their inventions, may have created strong incentives for business method applicants to use vague language in their claims. VAGUE URGES Many, and probably most, patent applicants do not have the resources to thoroughly search the vast prior art relating to business methods. Nor does the PTO. Much of that prior art is almost impossible to find because it does not exist in a generally available printed publication. It may lie in an obscure form in the files of a small business; it may exist in unwritten form as practiced by one or more companies; it may be buried deep in the computer code on a server somewhere. And while literature on, say, the mechanical arts is mature and organized, the same cannot be said for the literature, to the extent it exists, on business practices. Knowing that they likely have not found all the relevant art, some patent applicants deliberately write vague language into their claims in the hopes that that language can later be used to distinguish as-yet-undiscovered prior art. Flexible language also may be helpful when asserting patent infringement by other business methods that were developed years after one’s own invention. The viability of this strategy depends on just how much bite the indefiniteness defense has. CLEARLY A HISTORY Early versions of the definiteness requirement were codified in the Patent Acts of 1836 and 1870. The language of today’s statute dates from 1952. So the indefiniteness defense has long been a part of patent law. It has been used relatively seldom — at least when compared to such mainstay infringement defenses as anticipation (the patentee was not first), lack of enablement (the patent does not teach how to make or use the invention), and obviousness (the invention is obvious to someone of ordinary skill in the relevant arts). But the courts have still developed a substantial body of case law. There is, moreover, a close relationship between the definiteness requirement and claim construction. Claim construction is the process by which courts determine, as a matter of law, the meaning of the patent claims’ language, which in turn determines the scope of those claims and of the intellectual property right. Patent infringement claims often rise or fall on claim construction. The Supreme Court’s opinion in Markman v. Westview Instruments Inc. (1996) is well known as a pillar of the law of claim construction. But it is just as much a pillar of the law of indefiniteness. In Markman, the Court highlighted the importance of drafting clear claims: Claims that are not sufficiently clear create a “zone of uncertainty” that “increases the risk of an infringement claim, and discourages enterprise, experimentation, and innovation.” It’s also worth noting, but often overlooked, what kind of patent was at issue in Markman. The case related to a system for monitoring the status, location, and movement of clothing in dry-cleaning establishments — effectively a business method. Over the years, most indefiniteness cases have fallen into one of three classes: They involve technical errors in drafting patent claims. They involve so-called means-plus-function claims. Or, especially important for business method patents, they address the ambiguities of the language of degree. In cases involving the language of degree, disputes arise when patentees attempt to distinguish their inventions using words such as “substantially,” “about,” “approximately,” or “close,” rather than specific measurements. One might claim, for example, a chemical composition that is “substantially free” of contaminants. The issue — for patent examiners and courts — is whether the language is as precise as possible. Would a person of ordinary skill in the relevant arts understand these terms with reasonable precision? The Federal Circuit has, in most cases, permitted the use of the language of degree. For example, in Orthokinetics Inc. v. Safety Travel Chairs Inc. (1986), the court found no problem with the phrase “so dimensioned,” calling it “as accurate as the subject matter permits.” In circumscribing those decisions, however, and in occasional rulings addressing other allegedly vague claim terms, the Federal Circuit has set the stage for — or at least has not ruled out — more broadly based indefiniteness charges. THE DATAMIZE DECISION Most recently, the Federal Circuit considered one broad indefiniteness charge in Datamize LLC v. Plumtree Software Inc. The Datamize opinion did not attract much attention when it was issued in August 2005, perhaps because on its facts it was an easy case. But the opinion provides useful guidance for those thinking about challenging many business method patents. At issue in Datamize were claims for an electronic kiosk system, including software for writing user interfaces. The claims required, among other things, interface screens with an “aesthetically pleasing” look and feel. The District Court had ruled on summary judgment that the term “aesthetically pleasing” was inherently subjective and therefore indefinite. On appeal, the patentee argued that claim terms having a subjective element were not forbidden, citing Federal Circuit cases, such as Orthokinetics, that permitted words of degree. The patentee also pointed to a declaration made by its expert witness identifying factors that a person could use to determine whether an interface screen was aesthetically pleasing. The Federal Circuit rejected the patentee’s arguments. In so doing, the court stated that some “objective standard” must be provided to allow the public to determine the scope of the invention. If that objective standard is not inherent in the claim language itself, then the patentee must provide it in the patent specification describing the invention. The Federal Circuit also rejected the expert’s declaration. It was not enough that the declaration identified factors that a person skilled in the art could use to determine whether a screen is aesthetically pleasing. The declaration did not explain how those factors should be evaluated or weighed to draw a conclusion one way or the other. AN INDEFINITE FUTURE Patent applicants, patentees, and accused infringers should all pay close attention to the lessons of Datamize. The “objective standard” as articulated by the Datamize court may be a powerful tool to probe business method patent claims for soft spots. An accused infringer can look beyond mere words of degree and examine any term for hidden subjectivity. Where it is difficult to articulate some kind of objective standard by which claim language can be understood, the claim may be indefinite. Potential targets might be claims that are directed to “improvements” and claims that expressly or inherently require the achievement of a business result. Beware, for example, the business method that ostensibly improves sales techniques, advertising effectiveness, or the quality of the customer’s experience. Patent applicants should take note of the guidelines issued by the PTO relating to business methods. Applicants may wish to carefully read the patent examination rules on the definiteness requirement — in particular, the discussion of words and phrases that may raise alarm bells for examiners. They should take care in using claim language that does not have a commonly accepted meaning or is not sufficiently defined in the patent specification. Patentees should not rely on claim language that is already susceptible to indefiniteness charges in order to distinguish their invention from the work of others. Doing so may only exacerbate their patent’s indefiniteness problem. In litigation, expert witnesses should be schooled to avoid incomplete declarations of the kind relied upon by the patentee in Datamize. For their part, accused infringers should comb the claims and patent specifications to identify undefined or poorly defined terms. They should also examine the prosecution history to identify less-than-precise language that was introduced into the claims to distinguish prior art. Accused infringers may find the indefiniteness defense particularly appealing because, as Datamize shows, it can be raised and won on summary judgment. For all the difficulties that the PTO and patentees have in identifying prior art for the purpose of examining and obtaining patents, accused infringers may have even greater difficulties in relying on prior-art defenses. Yet there are dangers in raising the indefiniteness defense. If it fails, the accused infringer could be left facing a very broad and now stronger patent claim — especially if the defense’s claim construction strategy is not closely coordinated with its assertion of indefiniteness problems. Depending on the facts of the case, an indefiniteness defense may be more successful as a means not to throw out the patent but to force the patentee to accept a more limited set of claims. In the end, patents must clearly define their scope. If some business method patents are sweeping too broadly, the answer may be to read their language more carefully. What do the words of the claims mean, exactly? Or don’t they mean anything, exactly?
James E. Hopenfeld and Gene W. Lee are partners in the Fish & Neave intellectual property group of Ropes & Gray. They are located in the firm’s Washington, D.C., and New York offices, respectively. As counsel for Live Global Bid Inc. and Live Global Communications USA Inc., the authors are asserting an indefiniteness defense in a patent infringement action filed by Auction Management Solutions Inc. in the Northern District of Georgia.

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