One interesting apect of Augme Technologies, Inc. v. Yahoo! Inc., 2013-1121, -1195 (June 20, 2014), is the Federal Circuit’s application of the Claim Construction Cannon that different words have different meanings. The claim required an “embeded code module,” The Federal Circuit noted that each asserted claim recites that the first code module is “embedded” or “configured to be embedded” and that the second code module is “retrieve[d]” or “download[ed].” The Federal Circuit found that this distinction creates a presumption that “embedded” means something different than “retrieved” or “downloaded, ” citing Helmsderfer v. Bobrick Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 2008) (“[D]ifferent claim terms are presumed to have different meanings.”); Applied Med. Res. Corp. v. U.S. Surgical Corp, 448 F.3d 1324, 1333 n.3 (Fed. Cir. 2006). Having created a distinction between embedded and retrieved and downloaded in structuring its claims, the patent owner could not argue that these different terms meant the same thing.
Nautlius, Inc. v. Biosig Instruments, Inc., — U.S. —, (2014), the Supreme Court rejected the Federal Circuit’s “insolubly ambiguous” test for indefiniteness under 35 U.S.C. §112, holding that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The case arrived at the Supreme Court after the Federal Circuit reversed a district court finding that the claims of U.S. Patent No. 5,337,753 on a heart rate monitor, which claimed electrodes contained the language “spaced relationship” were indefinite. The Supreme Court “cognizant of the competing concerns” read Section 112 to require that a patent’s claims , viewed in light of the prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” The Supreme Court explained that this standard “mandates clarity, while recognizing that absolute precision is unattainable” and accords with the Court’s decisions that the certainty that the law requires of patents “is not greater than is reasonable, having regard to their subject-matter.” The Court declined to apply the standard to the claims, remanding the case for further consideration.