If the Courts Can Construe it, the Claim is Not Indefinite

Invitrogen Corp. v. Biocrest Manufacturing, L.P., [04-1273, -1274](October 5, 2005)[RADER, Dyk, and Prost] The Federal Circuit affirmed the district court’s holding of infringement, and that the claims were not indefinite, but reversed and remanded the judgment of invalidity under the on-sale bar. LOF: Whether a patent is invalid due to public use under §102(b) is a question of law based upon underlying questions of fact. The Federal Circuit stated that under Pfaff v. Wells, a §102(b) analysis involves two separate inquiries: whether the invention was on sale and whether the invention was complete and ready for patenting. The Federal Circuit said that the ready for patenting test applies equally to public use under §102(b). The Federal Circuit said that the public use prong of the §102(b) statutory bar is whether the purported use: (1) as accessible to the public; or (2) was commercially exploited. The Federal Circuit said that commercial exploitation is a clear indication of public use, but it likely requires more than, for example, a secret offer for sale. Thus the test for the public use prong includes the consideration of evidence relevant to experimentation, as well as the nature of the activity that occurred in public; public access to the use, confidentiality obligations imposed on members of the public who observed the use, and commercial exploitation. The patentee had used the process in its own laboratories before the critical date, but argued a secret internal use is not a “public use”
The Federal Circuit also considered whether the claims were indefinite. A claim is definite if one skilled in the art would understand the bounds of the claim when read in light of the specification. Even if it is a formidable task to understand a claim, and the result is not unanimously accepted, as long as the boundaries of a claim may be understood it is sufficiently clear to avoid invalidity for indefiniteness. Invitrogen complained that it would have to practice the invention in order to determine whether it infringed, but the Federal Circuit responded that the test for indefiniteness does not depend on a potential infringer’s ability to ascertain the nature of its won accused product to determine infringement, but instead on whether the claim delineates to a skilled artisan the bounds of the invention. The Federal Circuit found that the district court’s and its construction showed that the claims contained no material ambiguities.