Federal Circuit Attacks Broad Claim Language That Might Cover More than the Inventor "Invented"

Halliburton Energy Services, Inc., v. M-I LLC, [2007-1149](January 25, 2008)[MICHEL, Bryson, Fogel] The Federal Circuit affirmed summary judgment in favor of M-I LLC that the asserted claims of U.S. Patent No. 6,887,832 were invalid as indefinite under 35 U.S.C. § 112, ¶ 2.
SIGNIFICANCE: The Federal Circuit criticizes claims that are not limited to what the inventor "invented", as well as the use of purely functional limitations to distinguish over the prior art.
BRIEF: At issue was the term "fragile gel" used in the preamble of the independent claim 1. Despite the fact that "fragile gel" was defined in the specification, the district court found that the definition was too subjective. The Federal Circuit noted that the public notice function of claims, and said that the primary purpose of the definiteness requirement is to guard against unreasonable advantages to the patentee and disadvantages to others arising from uncertainty as to their respective rights. The Federal Circuit said that the statutory requirement of particularity and distinctness in claims is met only when the claims clearly distinguish what is claimed from what went before in the art and clearly circumscribe what is foreclosed from future enterprise. Claims were held indefinite only where a person of ordinary skill in the art could not determine the bounds of the claims, i.e., the claims were insolubly ambiguous.
The Federal Circuit said that claims are not indefinite merely because they present a difficult task of claim construction. If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, the claim is sufficiently clear to avoid invalidity on indefiniteness grounds.
Haliburton argued that "Fragile Gels" meant having low or no organophilic clay. The Federal Circuit rejected this, noting that the specification merely said there is no need for such clays. Absence of need for a component does not necessarily mean that that component is absent, or present only in low amounts. Additionally, the specification stated that "preferably" none of these clays are added. The Federal Circuit said that this strongly suggested that absence of clays is simply a preferred embodiment. This was reinforced by claim differentiation.
The Federal Circuit said that even if the ’832 patent distinguished "fragile gels" of the invention from those of the prior art, it did not place any limit on the scope of what was invented beyond the prior art. The Federal Circuit's concern appeared to be more concerned about the scope of the claim than their definiteness: By failing to identify the degree of the fragility of its invention, Halliburton’s proposed definition would allow the claims to cover not only that which it invented that was superior to the prior art, but also all future improvements to the gel’s fragility. While patentees are allowed to claim their inventions broadly, they must do so in a way that distinctly identifies the boundaries of their claims.
The Federal Circuit said that Halliburton's proposed construction did not give proper notice of the scope of the claims to competitors. Adopting Haliburton's construction could retard innovation because cautious competitors may steer too far around that which Halliburton actually invented, neglecting improvements that otherwise might be made. The Federal Circuit found that the definition did not adequately apprise a person of ordinary skill in the art of the claim scope. The Federal Circuit went on to criticize the use of purely functional language to distinguish over the prior art.