American Technical Ceramics Corp. v. Presidio Components, Inc.

The Patent Act requires every patent to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” 35 U.S.C. § 112 ¶ 2. For more than a century, this definiteness requirement has served to “apprise the public of what is still open to them.” McClain v. Ortmayer, 141 U.S. 419, 424 (1891); see also Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014) (holding that patent must be “precise enough to provide clear notice of what is claimed.”). In this case, the Federal Circuit gutted the critical notice function of patent claims. It further ignored this Court’s clear instructions by finding the patent-in-suit definite based exclusively on extrinsic evidence generated more than a decade after the patent issued. That evidence was one trial expert’s opinion that a person of ordinary skill in the art (“POSITA”) would be able to ascertain the scope of the claims after concocting a gallimaufry of novel experiments that had never been performed outside of the instant litigation, were unknown to the scientific community, and were neither described nor identified in the patent. The question presented is: When a patent is devoid of intrinsic evidence and the scientific literature provides no guidance with respect to determining claim scope, can a court rely only on the ex post facto application of the scientific method to hold that the “clear notice” requirement of § 112 ¶ 2 has been satisfied?