Federal Circuit Declines To Find Patent Claims Indefinite For Broad Descriptive Words (And An Ode To 1L Civil Procedure)

Abstract

In a recent decision, the U.S. Court of Appeals for the Federal Circuit (“Federal Circuit”) handed down a ruling on the definiteness prong of patentability. While the case tackled multiple issues on appeal, this Comment primarily focuses on two: whether claims are invalid for use of descriptive words or terms of degree, and whether sanctions are appropriate for failing to disclose predicate facts during discovery. First, the panel unanimously disagreed with the district court’s analysis of claims containing two descriptive terms, “resilient” and “pliable,” and reversed the judgment holding claims indefinite for use of these terms. Ultimately, while the disputed terms were broad, they were not uncertain to a skilled artisan and did not amount to purely subjective terms that changed with a person’s opinion. Next, while the panel upheld the district court’s order of sanctions, Niazi missed an opportunity to have the panel weigh in on the appropriate test for exclusion of previously undisclosed evidence. This outcome is an important reminder that procedural posture can have a ripple effect on downstream infringement claims.

Keywords: patent, patent litigation, Federal Circuit, indefiniteness, invalidity, intellectual property, patent infringement, civil procedure, law