The Federal Circuit On The Public Notice Function Of Patents

On Wednesday, the Federal Circuit issued its decision in Amgen, Inc. v. Sandoz, Inc.  The decision—mostly focused on the specifics of certain biosimilar production claims—also includes a brief discussion that illustrates one of the reasons that many of the patents issued by the USPTO create a chilling effect on public innovation.

“The public has a right to rely on the language of patent claims.”

Amgen’s patent required a process with three separate steps.  Sandoz’s process was a single step process that performed the same general function.  But Amgen claimed that Sandoz infringed under the doctrine of equivalents, a patent law doctrine that allows a patent owner to assert infringement that goes outside of the literal scope of the claims.

Quoting Duncan Parking, the Federal Circuit stated the doctrine of equivalents applies “only in exceptional cases” because “the public has a right to rely on the language of patent claims” and denied Amgen’s doctrine of equivalents argument.  Duncan Parking explains the rationale for this by citing another case, London v. Carson Pirie Scott:

“[I]f the public comes to believe (or fear) that the language of patent claims can never be relied on, and that the doctrine of equivalents is simply the second prong of every infringement charge, regularly available to extend protection beyond the scope of the claims, then claims will cease to serve their intended purpose.”

It’s desirable to encourage others to design around a patent by coming up with an alternative way to achieve the goal of the patent.  That’s why patents are supposed to only apply to specific ways of achieving a result, not simply allowing a patentee to own a particular outcome.  One of the problems with many patents—especially for computer-implemented inventions—is that they effectively claim the outcome, rather than the mechanism for achieving that outcome.

“If the public comes to believe that the language of patent claims can never be relied on … then claims will cease to serve their intended purpose.”

Even if a patent claims one way of doing something, not just the result, if the language of the claims is unclear or impossible to understand—or even to understand easily—then members of the public are faced with the choice of either avoiding an area of technology they might well be entitled to use, or else engaging in that area and running the risk that they do infringe a valid claim.  

USPTO Director Iancu often refers to “certainty” and “predictability” when discussing § 101.  But those same concerns—the ability of the public to have certainty and predictability as to what a patent means—are far too often not part of the discussion.  This week, the Federal Circuit again highlighted this problem. Their future case law should do the same, working to ensure that unclear patent claims—claims which fail to serve their intended purpose of providing public notice—are considered invalid.

Joshua Landau

Joshua Landau is the Patent Counsel at the Computer & Communications Industry Association (CCIA), where he represents and advises the association regarding patent issues.  Mr. Landau joined CCIA from WilmerHale in 2017, where he represented clients in patent litigation, counseling, and prosecution, including trials in both district courts and before the PTAB.

Prior to his time at WilmerHale, Mr. Landau was a Legal Fellow on Senator Al Franken’s Judiciary staff, focusing on privacy and technology issues.  Mr. Landau received his J.D. from Georgetown University Law Center and his B.S.E.E. from the University of Michigan.  Before law school, he spent several years as an automotive engineer, during which time he co-invented technology leading to U.S. Patent No. 6,934,140.

Follow @PatentJosh on Twitter.