3. Real-World Examples of Poor Patent Drafting
1. Nautilus, Inc. v. Biosig Instruments, Inc. (2014)
Key Issue: Ambiguity in claim language
In this case, Biosig Instruments filed a patent for a heart rate monitor. However, the patent’s claims used ambiguous language like “spaced relationship,” which failed to provide clear boundaries for the invention. Nautilus challenged the patent on the grounds of indefiniteness.
Outcome:
The U.S. Supreme Court ruled in favor of Nautilus, stating that the claims were not sufficiently clear. This decision raised the bar for claim clarity, emphasizing that patent claims must inform a person skilled in the art about the scope of the invention with reasonable certainty.
Lesson Learned:
Avoid vague and ambiguous language in claims. Precision is crucial to withstand challenges. Clearly define technical terms and ensure the claims are consistent with the description.
2. Ariad Pharmaceuticals, Inc. v. Eli Lilly & Co. (2010)
Key Issue: Lack of written description
Ariad Pharmaceuticals’ patent on methods for regulating gene expression was challenged by Eli Lilly for lacking an adequate written description. The claims were broad, but the specification failed to support the full scope of the claimed invention.
Outcome:
The Federal Circuit invalidated Ariad’s patent for failing to meet the written description requirement under 35 U.S.C. § 112.
3. Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co. (2002)
Key Issue: Prosecution history estoppel
Festo amended its patent claims during prosecution to overcome prior art, but the amendments later limited its ability to enforce the patent under the doctrine of equivalents.
Outcome:
The U.S. Supreme Court ruled that amending claims during prosecution can create a presumption of surrendering equivalent coverage. Festo lost its ability to claim broader protection.
Lesson Learned:
Be cautious with amendments during prosecution. Amendments should be carefully considered to avoid unintentional narrowing of claim scope.
4. Apple Inc. v. Samsung Electronics Co. (2011–2018)
Key Issue: Inconsistent claim language
In the highly publicized patent war between Apple and Samsung, some of Apple’s patent claims were found to be inconsistent and overly broad, leading to partial invalidation.
Outcome:
Although Apple secured significant damages, parts of its claims were invalidated, weakening its overall legal position and reducing the potential scope of enforcement.
Lesson Learned:
Consistency across the specification, claims, and drawings is vital. Any discrepancies can weaken a patent during litigation.
