United States Court of Appeals
for the Federal Circuit
__________________________
ENZO BIOCHEM, INC., ENZO LIFE SCIENCES,
INC.,
AND YALE UNIVERSITY,
Plaintiffs-Appellants,
v.
APPLERA CORP. AND TROPIX, INC.,
Defendants-Appellees.
__________________________
2009-1281
__________________________
Appeal from the United States District Court for the
District of Connecticut in case no. 3:04-CV-929,
Judge Janet Bond Arterton.
__________________________
ON PETITION FOR PANEL REHEARING AND
REHEARING EN BANC
__________________________
Before MICHEL, Chief Judge, NEWMAN, MAYER, PLAGER, ∗
LOURIE, RADER, BRYSON, GAJARSA, LINN, DYK, PROST, and
MOORE, Circuit Judges.
PER CURIAM.
∗
Judge Plager participated only in the decision on
the petition for panel rehearing.
ENZO BIOCHEM v. APPLERA CORP 2
PLAGER, Circuit Judge, dissents from the denial of the
petition for panel rehearing.
__________________________
NICHOLAS GROOMBRIDGE, Weil, Gotshal & Manges
LLP, of New York, New York, filed a combined petition for
panel rehearing and rehearing en banc for defendants-
appellees. With him on the petition was JENNIFER H. WU.
Of counsel on the petition was KURTIS D. MACFERRIN, Life
Technologies Corporation, of Foster City, California.
L. GENE SPEARS, Baker Botts L.L.P., of Houston,
Texas, filed a response to the petition for plaintiffs-
appellants. With him on the response was MICHAEL
HAWES.
__________________________
ORDER
Defendants-Appellees Applera Corp. and Tropix, Inc.
filed a combined petition for panel rehearing and rehear-
ing en banc. The panel requested a response from Plain-
tiffs-Appellants Enzo Biochem, Inc., Enzo Life Sciences,
Inc., and Yale University. The court granted Defendants-
Appellees leave to file a reply. The petition for rehearing
was considered by the panel that heard the appeal, and
thereafter the petition for rehearing en banc, the response
to the petition, and reply were referred to the circuit
judges who are in regular active service.
Upon consideration thereof,
IT IS ORDERED THAT:
(1) The petition of Defendants-Appellees for panel
rehearing is denied.
(2) The petition of Defendants-Appellees for rehear-
ing en banc is denied.
3 ENZO BIOCHEM v. APPLERA CORP
(3) The mandate of the court will issue on June 2,
2010.
FOR THE COURT
May 26, 2010 /s/ Jan Horbaly
Date Jan Horbaly
Clerk
cc: L. Gene Spears, Esq.
Nicholas Groombridge, Esq.
United States Court of Appeals
for the Federal Circuit
__________________________
ENZO BIOCHEM, INC., ENZO LIFE SCIENCES,
INC.,
and YALE UNIVERSITY,
Plaintiffs-Appellants,
v.
APPLERA CORP. and TROPIX, INC.,
Defendants-Appellees.
__________________________
2009-1281
__________________________
Appeal from the United States District Court for the
District of Connecticut in Case No. 3:04-CV-929,
Judge Janet Bond Arterton.
ON PETITION FOR PANEL REHEARING
PLAGER, Circuit Judge, dissenting from the denial of
the petition for panel rehearing.
I respectfully dissent from the denial of the petition
for panel rehearing on the question of indefiniteness.
Despite the varying formulations that this court has used
over the years in describing its “indefiniteness” jurispru-
dence to which the petitioner in this case points, the
general conclusion from our law seems to be this: if a
person of ordinary skill in the art can come up with a
plausible meaning for a disputed claim term in a patent,
ENZO BIOCHEM v. APPLERA CORP 2
that term, and therefore the claim, is not indefinite. 1 At
least not so indefinite as to run afoul of the statutory
requirement that claims shall “particularly point[ ] out
and distinctly claim[ ] the subject matter which the appli-
cant regards as his invention.” 35 U.S.C. § 112, second
paragraph.
The corollary derived from this understanding is that
if several persons of ordinary skill come up with compet-
ing but plausible interpretations of a disputed term—as is
typically the case with competing “expert witnesses” in
patent infringement litigation—the problem is not one of
an inherently ambiguous and potentially indefinite claim
term, but rather the problem becomes simply one of
picking the “right” interpretation for that term. 2 Since
picking the “right” interpretation—claim construction—is
a matter of law over which this court rules, and since the
view of the trial judge hearing the case is given little
1 See, e.g., Datamize, LLC v. Plumtree Software,
Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (“Only claims
‘not amenable to construction’ or ‘insolubly ambiguous’
are indefinite.” (citing Novo Indus., L.P. v. Micro Molds
Corp., 350 F.3d 1348, 1353 (Fed. Cir. 2003); Honeywell
Int’l, Inc. v. Int’l Trade Comm’n, 341 F.3d 1332, 1338
(Fed. Cir. 2003); Exxon Research & Eng’g Co. v. United
States, 265 F.3d 1371, 1375 (Fed. Cir. 2001))).
2 Broad, to the point of inherently ambiguous, claim
drafting is not just a matter of poor drafting skills on the
part of some lawyers who prosecute patent applications.
On the contrary, the art of broad claim drafting is a
prized talent—clients are openly urged to use “broad
patent protection both offensively to block competitors
from the marketplace, and defensively to serve as a
bargaining chip against potential patent infringement
suits” and to “file patents to cover all aspects of the core
technology . . . to create a ‘picket fence’ of protection.”
David J. Dykeman and Joanna T. Brougher, File, Protect,
Update, Defend, Corporate Counsel, May 1, 2010,
http://www.law.com/jsp/cc/PubArticleCC.jsp?id=12024476
71049.
3 ENZO BIOCHEM v. APPLERA CORP
weight, so that the trial judge’s view on appeal becomes
just a part of the cacophony before this court, it is not
until three court of appeals judges randomly selected for
that purpose pick the “right” interpretation that the
public, not to mention the patentee and its competitors,
know what the patent actually claims. The inefficiencies
of this system, and its potential inequities, are well
known in the trade.
The United States Patent and Trademark Office
(“PTO”), by contrast, appears to be taking steps to give
the statutory requirement real meaning. In 2008, the
patent examining corps was given a five-page instruction
on “Indefiniteness rejections under 35 U.S.C. 112, second
paragraph.” 3 The memo initially observes that “[t]he
primary purpose of the definiteness requirement for claim
language is to ensure that the scope of the claims is clear
so that the public is informed of the boundaries of what
constitutes infringement of the patent.” 4 The memo
reviews in detail a recent opinion of this court, following
which the memo states the position of the PTO: “If the
language of a claim, considered as a whole in light of the
specification and given its broadest reasonable interpreta-
tion, is such that a person of ordinary skill in the relevant
art would read it with more than one reasonable interpre-
tation then a rejection of the claim under 35 U.S.C. 112,
second paragraph, is appropriate.” 5
This memo was followed later in the year by a rare
precedential opinion issued by the Board of Patent Ap-
3 Memorandum from John Love, Deputy Commissioner for
Patent Examination Policy, to Technology Center Directors and
Patent Examining Corps (Sept. 2, 2008), available at
http://www.uspto.gov/web/patents/memoranda.htm.
4 Id. at 1.
5 Id. at 2.
ENZO BIOCHEM v. APPLERA CORP 4
peals and Interferences (“Board”) in Ex parte Miyazaki. 6
The Board noted that this court has in post-issuance
patent infringement cases held “that the definiteness
requirement ‘does not compel absolute clarity’ and ‘[o]nly
claims “not amenable to construction” or “insolubly am-
biguous” are indefinite.’” 7 Recognizing that this court has
never set forth a different standard of review for indefi-
niteness under 35 U.S.C. § 112, second paragraph, for
pre-issuance pending claims as compared with post-
issuance patent claims, 8 the Board concluded that the
Federal Circuit’s reading of the indefiniteness require-
ment was counter to the PTO’s broader standard for claim
construction during prosecution. 9 Accordingly, the Board
announced that, “rather than requiring that the claims
are insolubly ambiguous, we hold that if a claim is ame-
nable to two or more plausible claim constructions, the
USPTO is justified in requiring the applicant to more
precisely define the metes and bounds of the claimed
invention by holding the claim unpatentable under 35
U.S.C. § 112, second paragraph, as indefinite.” 10
The Board is clearly right in recognizing that the cir-
cumstances are different between pre-issuance and post-
issuance application of the definiteness standard with
regard to claim terms. At the same time, the PTO and
the Board are clearly right in insisting that, if the public
notice function of the patent law is to be honored, claim
terms must particularly point out and distinctly claim the
subject matter of the invention. In my view, this court’s
definiteness doctrine could go considerably further in
promoting that objective than it currently does, with the
6 No. 2007-3300, 2008 WL 5105055 (Bd. Pat. App.
& Inter.) (Nov. 19, 2008).
7 Id. at *4 (quoting Datamize, 417 F.3d at 1347).
8 Id. at *6.
9 Id. at *5.
10 Id.
5 ENZO BIOCHEM v. APPLERA CORP
not inconsequential benefit of shifting the focus from
litigation over claim construction to clarity in claim
drafting.
To begin the discussion of how this court could move
in that direction, I would grant the petition for panel
rehearing. The court now spends a substantial amount of
judicial resources trying to make sense of unclear, over-
broad, and sometimes incoherent claim terms. It is time
for us to move beyond sticking our fingers in the never-
ending leaks in the dike that supposedly defines and
figuratively surrounds a claimed invention. Instead, we
might spend some time figuring out how to support the
PTO in requiring that the walls surrounding the claimed
invention be made of something other than quicksand.
I respectfully dissent from the loss of that opportunity
through the panel’s denial of rehearing.