July 13, 2016 Patent Technology Centers 3600 & 3700 Customer Partnership 112(b) Discussion Ashok K. Mannava ashok@mannavakang.com www.mannavakang.com Mannava & Kang, P.C. The views presented are solely of the presenter and do not represent an official position of Mannava & Kang, P.C. or any of its clients

Executive Summary Overview Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2125, 2014 BL 151635, 110 U.S.P.Q.2d 1688 (2014) Interval Licensing v. AOL, 112 USPQ2d 1188 (Fed. Cir. 2014) DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245, 1261 (Fed. Cir. 2014) Ethicon Endo-Surgery v. Covidien, 115 USPQ2d 1880 (Fed. Cir. 2015) Summary 2

35 U.S.C. §112(b) 35 U.S.C. §112(b) : The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention. The claims must particularly point out and distinctly define the metes and bounds of the subject matter to be protected by the patent grant (see MPEP 2171) 3

Definiteness-MPEP Notice Function of 35 U.S.C. 112(b) - determine whether the claim apprises one of ordinary skill in the art of its scope to provide clear warning to others as to what constitutes infringement of the patent (see MPEP 2173.02) Definiteness of claim language must be analyzed, not in a vacuum, but in light of: (A) The content of the particular application disclosure; (B) The teachings of the prior art; and (C) The claim interpretation that would be given by one possessing the ordinary level of skill in the pertinent art at the time the invention was made. (see MPEP 2173.02) Applicant may use functional language, alternative expressions, negative limitations, or any style of expression or format of claim which makes clear the boundaries of the subject matter for which protection is sought. (see MPEP 2173.01) A broad claim is not indefinite merely because it encompasses a wide scope of subject matter provided the scope is clearly defined. (see MPEP 2173.02) 4

Nautilus, Inc. v. Biosig Instruments, Inc. Supreme Court Decision, June 2014 New “reasonable certainty” standard for evaluating definiteness whether “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty” Replaces “insolubly ambiguous” or ‘‘not amenable to construction’ ’standards Nautilus purportedly lowered-the-bar on indefiniteness Minimal guidance on what constitutes “reasonable certainty” 5

Interval Licensing v. AOL Representative claim 1 of the ‘314 patent (with emphasis added): 1. A method for engaging the peripheral attention of a person in the vicinity of a display device, comprising the steps of: providing one or more sets of content data to a content display system associated with the display device and located entirely in the same physical location as the display device; providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data; and auditing the display of sets of content data by the content display system; … . 6

Interval Licensing v. AOL Federal Circuit Decision, Sept. 2014 (Judge Chen) Applied “reasonably certainty” standard from Nautilus Subjective claim term (“unobtrusive manner”) made claims indefinite “unobtrusive manner” phrase was found highly subjective no objective indication of the manner in which content images are to be displayed to the user specification determined to be muddled, leaving one unsure of whether the “unobtrusive manner” phrase has temporal dimensions as well as spatial dimensions terms of degree not inherently indefinite but meaningful “objective” boundaries” are needed 7

DDR Holdings, LLC v. Hotels.com Key limitation of representative claim 13 of the ‘572 patent (with emphasis added): a) a data store including a look and feel description associated with a host web page having a link correlated with a commerce object; and … . Key limitation of representative claim 19 of the ‘399 patent (with emphasis added): (a) a computer store containing data, for each of a plurality of first web pages, defining a plurality of visually perceptible elements, which visually perceptible elements correspond to the plurality of first web pages; … . Parties stipulated to a construction of “visually perceptible elements” as “‘look and feel’ elements that can be seen.” 8

DDR Holdings, LLC v. Hotels.com Federal Circuit Decision, Dec. 2014 (Judge Chen) Do the claim terms “look and feel” and “visually perceptible elements” render the claims indefinite because they are impermissibly subjective “look and feel” not indefinite “look and feel” was found to have an “established, sufficiently objective meaning in the art” examples in the specification are consistent with the established meaning as demonstrated by evidence at trial “Look and feel elements” are described as “includ[ing] logos, colors, page layout, navigation systems, frames, ‘mouse-over’ effects, or other elements that are consistent through some or all of a Host’s website.” evidence at trial demonstrated meaning was established in the art 9

DDR Holdings, LLC v. Hotels.com Distinguishes from Interval “unobtrusive manner” from Interval characterized as facially subjective term For some facially subjective terms, the definiteness requirement is not satisfied by merely offering examples that satisfy the term with in the specification. single example of the term “unobtrusive manner” in the specification did not outline the claims to a skilled artisan with reasonable certainty Distinguishes from Datamize “aesthetically pleasing” from Datamize characterized as facially subjective term When a claim term “depend[s] solely on the unrestrained, subjective opinion of a particular individual purportedly practicing the invention,” without sufficient guidance in the specification to provide objective direction to one of skill in the art, the term is indefinite 10

DDR Holdings, LLC v. Hotels.com Consistent with Enzo Biochem For terms of degree, “specific and unequivocal examples may be sufficient to provide a skilled artisan with clear notice of what is claimed “not interfering substantially” found to be definite where intrinsic evidence provided multiple examples that would allow a skilled artisan to determine whether a particular chemical bond linking group would “interfer[e] substantially” with hybridization 11

Ethicon Endo-Surgery v. Covidien Representative claim 17 of the ‘501 patent (with emphasis added): 17. An ultrasonic surgical shears comprising: a) an ultrasonic surgical blade; b) a clamping arm operable to open and close toward the blade; c) a tissue pad attached to the clamping arm, wherein the blade and tissue pad define a clamping surface area so that the applied clamp force does not exceed a clamping pressure of 210 psi at the clamping surface area; and d) means for limiting a user applied clamping force on the clamping arm creating an average predetermined clamping pressure between and including 60 psi and 210 psi on tissue disposed between the tissue pad and the blade. 12

Ethicon Endo-Surgery v. Covidien Federal Circuit Decision, Aug. 2015 (Judge Chen) asserted claims recite or imply an “average” clamping pressure in the range “between and including 60 psi and 210 psi” Do the specification and the understanding in the art specify “a method of measurement, the location of measurement, and the type and amount of tissue used for the measurement of clamping force[s] and clamping pressure[s]” recited by the claims are the claims indefinite for failing to state how to arrive at the claimed force and pressure measurements D. Ct expressed concern that claims don’t refer to a particular point on the clamping surface area for taking pressure measurements and no industry standard for measuring 13

Ethicon Endo-Surgery v. Covidien Claims found definite Definiteness requirement mandates only that one of ordinary skill in the art must be able to understand which pressures are relevant to the claims and how those pressures can be measured, so to discern the scope of the claimed average pressure range with reasonable certainty. No requirement for the specification to identify a particular measurement technique 14

Ethicon Endo-Surgery v. Covidien specification clearly discloses that the claimed clamping pressure is an average pressure on tissue disposed between the tissue pad and blade specification discloses that the clamping pressure is measured when the clamping arm and blade are in a closed position various mechanisms of measuring/calculating average pressure all converge because of linearity involved specification is sufficient to inform skilled artisans as to where average pressure should be measured—the midpoint of the tissue pad (also the midpoint of the clamping arm for the ultrasonic shears at issue here) 15

Conclusion definiteness requirement calls for a “delicate balance” that “must allow for a modicum of uncertainty” to provide incentives for innovation, but must also require “clear notice of what is claimed, thereby appris[ing] the public of what is still open to them (see Nautilus) claims must be viewed in light of the specification and file history definiteness evaluated from the point of view of one of ordinary skill in the art at the time the application was filed no bright line test; evaluated on case-by-case basis examples in specification may or may not be sufficient to satisfy reasonably certainty standard 16

The End Ashok K. Mannava ashok@mannavakang.com www.mannavakang.com Mannava & Kang, P.C.