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

10 Pages Posted: 9 Aug 2022

See all articles by Janelle Barbier

Janelle Barbier

Santa Clara University, School of Law

Date Written: July 28, 2022

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

Suggested Citation

Barbier, Janelle, Federal Circuit Declines To Find Patent Claims Indefinite For Broad Descriptive Words (And An Ode To 1L Civil Procedure) (July 28, 2022). Santa Clara Computer and High Technology Law Journal, Forthcoming, Santa Clara Univ. Legal Studies Research Paper No. 4174697, Available at SSRN: https://ssrn.com/abstract=4174697 or http://dx.doi.org/10.2139/ssrn.4174697

Janelle Barbier (Contact Author)

Santa Clara University, School of Law ( email )

500 El Camino Real
Santa Clara, CA 95053
United States

Do you have a job opening that you would like to promote on SSRN?

Paper statistics

Downloads
9
Abstract Views
410
PlumX Metrics