The Importance of Defining Novel Terms in Patenting Nanotechnology Inventions

Descriptive terminology is essential to providing effective patent protection for nanotechnology inventions, particularly from the perspective of future licensing and litigation activities. One of the key difficulties in patenting nanotech inventions, however, arises from the absence of established terminology. Failure to clearly define one's invention can lead to a number of unfortunate consequences, ranging from an overly narrow patent covering a limited scope of subject matter to a vague or overly broad patent susceptible to invalidation. This article will discuss: 1) recent decisions from the Federal Circuit that reveal how the use of descriptive terminology is essential to patenting nanotech inventions effectively, 2) how those decisions pose special problems for nanotech inventions, and 3) how those problems can be addressed through nanotech inventors acting as their own lexicographers and defining key terms in their patent specifications.

A number of recent decisions by the Federal Circuit have addressed the way in which courts should interpret the language of patent claims in determining their scope. Those decisions have emphasized that the language of the claims themselves should be the centerpiece of any analysis in determining the legal boundaries of the patented invention. Foremost among those decisions is Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (2002), in which the Federal Circuit stated that claim terms “bear a 'heavy presumption' that they mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” Id. at 1202.

Significantly, the court indicated that the “ordinary meaning” of claim terms should be ascertained by using dictionaries, encyclopedias, and treatises as the principal guides:

Dictionaries, encyclopedias, and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art. … [T]hese materials may be the most meaningful sources of information to aid judges in better understanding both the technology and the terminology used by those skilled in the art to describe the technology. Id. at 1202-03 (emphasis added).

While maintaining its view that dictionaries and other references are key sources of information in determining the ordinary meaning of claim terms, the Federal Circuit has emphasized in both Texas Digital and subsequent decisions that “the intrinsic record [the claims, specification, and prosecution history] must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (emphasis added); see also Housey Pharm., Inc. v. AstraZeneca UK Ltd., 366 F.3d 1348, 1352 (Fed. Cir. 2004).

While the Federal Circuit has suggested that a dictionary-based approach ultimately benefits patentees by providing a claim term with the “full range of its ordinary meaning,” id. at 1202, this approach presents a host of problems with respect to: 1) existing terms that have a unique meaning in the nanotech context, and 2) new terms peculiar to nanotechnology that have yet to be defined in dictionaries or other references. As for existing terms, one potentially serious problem is that such terms are susceptible to a range of definitions depending on the particular dictionary, treatise, or encyclopedia used to define the term, with none of the definitions actually corresponding to how the term is meant to be used in the nanotech context. At best, this problem could result in an erroneous interpretation of the desired scope of the claim; at worst, it could result in a complete misinterpretation of the claimed invention. For example, one frequently used term in nanotechnology is the word “crystal.” Webster's' II New Riverside Dictionary, a well-know lay dictionary, provides the following definition of crystal:

A 3-dimensional structure made up of atoms, molecules or ions arranged in basic units that are repeated throughout the structure.” Webster's II New Riverside Dictionary 169 (Rev. ed. 1996).

By contrast, the Eighth Edition of the McGraw-Hill Encyclopedia of Science and Technology, a technical treatise published in the same time frame as Webster's, provides a more narrow definition of the term, particularly as it pertains to the electronic arts:

A solid in which the atoms or molecules are arranged periodically. … In scientific nomenclature, the term crystal is usually short for single crystal, a single periodic arrangement of atoms. … In electronics the term is usually restricted to mean a single crystal which is piezoelectric. 4 McGraw-Hill Encyclopedia of Science & Technology 630 (8th ed. 1997) (emphasis added).

As may be discerned by these two definitions, a court's interpretation of the claim term (and thus the scope of the claimed invention) would vary appreciably depending on which definition it chose. If the court chose the McGraw Hill definition of “crystal,” the scope of the patentee's claim could be quite narrow. Not only would the term be limited to only a single crystal, but it could be further limited to a piezoelectric crystal if the term pertained to an invention in the electronic arts. By contrast, if the court chose the Webster's definition of crystal, neither the “single crystal” nor the “piezoelectric” limitations would be read into the claim term; as such, the claim term (and the claimed invention) would be interpreted considerably more broadly.

The problem of divergent definitions is further compounded by the fact that a court's choice of a particular definition may in some cases be a function of the technical background of the judge hearing the case. For example, a non-technically versed judge may be inclined to choose a non-technical dictionary definition over a technical one in view of a more user-friendly definition, despite the fact that such a definition might yield an erroneous interpretation of the claim term.

A series of other problems arise when a court is asked to interpret a novel nanotechnology term that has yet to be defined in a dictionary or other reference. As an initial matter, a court might resort to combining dictionaries or other references in order to cobble together a definition based on the claim term's constituent parts, an approach that could easily result in a definition at odds with the patentee's desired meaning. Moreover, if a court decides against attempting to define a new nanotech term by combining dictionaries or other references, the court may ultimately resort to choosing between competing expert testimony for a term's definition, a scenario that could leave a nanotech inventor in no better position in view of the lack of agreement in the field as to many of these terms. From the foregoing, it is clear that the dictionary-based approach presents a number of problems for nanotech inventors, whether the term is a common one used in the new context of nanotechnology, or whether the terminology is completely new and has yet to be defined in a dictionary or other reference.

Significantly, the Federal Circuit has provided nanotech patentees with an escape hatch from the uncertainty associated with the dictionary-based approach. If the patentee acts as his or her own lexicographer by defining claim terms in the patent's specification, the court will interpret the claim terms in accord with the patentee's definition. The court recently reiterated the well-established principle that “a definition of a claim term in the specification will prevail over a term's ordinary meaning if the patentee has acted as his own lexicographer and clearly set forth a different definition.” 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). For example, in U.S. Patent No. 6,500,622, the patentees chose to be their own lexicographers as to the terms “semiconductor nanocrystal” and “quantum dot,” defining those terms as follows:

The terms 'semiconductor nano-crystal,' 'SCNC,' 'quantum dot' and 'SCNC^TM nanocrystal' are used interchangeably herein and refer to an inorganic crystallite of about 1 nm or more and about 1000 nm or less in diameter … SCNCs are characterized by their uniform nanometer size. An SCNC is capable of emitting electromagnetic radiation upon excitation (i.e., the SCNC is luminescent) and includes a 'core' of one or more first semiconductor materials, and may be surrounded by a 'shell' of a second semiconductor material.

It is significant to note that “semiconductor nanocrystal” and “quantum dot” are defined with a rather high degree of particularity; such particularity may or may not be appropriate depending on the particular term. For example, a high level of descriptive detail may be preferable in a case where the subject matter has been the focus of extensive research and development, and there is concern that existing art could potentially invalidate the claims if the invention is defined too broadly. Conversely, less detail may be preferable in the case of pioneering inventions, in which case the realm of prior art is small and a patentee can maximize the claimed subject matter without fear of invalidating art.

In either case, when devising definitions to describe their inventions, patentees should consider reviewing current dictionaries, encyclopedias and treatises, as well as patents and journal articles, to understand the ways others have chosen to describe and/or claim their nanotech inventions. Such research will enable patentees to formulate descriptive definitions for both existing and novel terms, helping to ensure that a court interpreting the patent claims will define the invention as the patentee desires. This approach, in turn, will enable patentees to avoid the potentially negative outcomes associated with the dictionary-based analysis of claim terms.

Descriptive terminology is essential to providing effective patent protection for nanotechnology inventions, particularly from the perspective of future licensing and litigation activities. One of the key difficulties in patenting nanotech inventions, however, arises from the absence of established terminology. Failure to clearly define one's invention can lead to a number of unfortunate consequences, ranging from an overly narrow patent covering a limited scope of subject matter to a vague or overly broad patent susceptible to invalidation. This article will discuss: 1) recent decisions from the Federal Circuit that reveal how the use of descriptive terminology is essential to patenting nanotech inventions effectively, 2) how those decisions pose special problems for nanotech inventions, and 3) how those problems can be addressed through nanotech inventors acting as their own lexicographers and defining key terms in their patent specifications.

A number of recent decisions by the Federal Circuit have addressed the way in which courts should interpret the language of patent claims in determining their scope. Those decisions have emphasized that the language of the claims themselves should be the centerpiece of any analysis in determining the legal boundaries of the patented invention. Foremost among those decisions is Texas Digital Systems, Inc. v. Telegenix, Inc., 308 F.3d 1193 (2002), in which the Federal Circuit stated that claim terms “bear a 'heavy presumption' that they mean what they say and have the ordinary meaning that would be attributed to those words by persons skilled in the relevant art.” Id. at 1202.

Significantly, the court indicated that the “ordinary meaning” of claim terms should be ascertained by using dictionaries, encyclopedias, and treatises as the principal guides:

Dictionaries, encyclopedias, and treatises, publicly available at the time the patent is issued, are objective resources that serve as reliable sources of information on the established meanings that would have been attributed to the terms of the claims by those of skill in the art. … [T]hese materials may be the most meaningful sources of information to aid judges in better understanding both the technology and the terminology used by those skilled in the art to describe the technology. Id. at 1202-03 (emphasis added).

While maintaining its view that dictionaries and other references are key sources of information in determining the ordinary meaning of claim terms, the Federal Circuit has emphasized in both Texas Digital and subsequent decisions that “the intrinsic record [the claims, specification, and prosecution history] must always be consulted to identify which of the different possible dictionary meanings is most consistent with the use of the words by the inventor.” Brookhill-Wilk 1, LLC v. Intuitive Surgical, Inc., 334 F.3d 1294, 1300 (Fed. Cir. 2003) (emphasis added); see also Housey Pharm., Inc. v. AstraZeneca UK Ltd., 366 F.3d 1348, 1352 (Fed. Cir. 2004).

While the Federal Circuit has suggested that a dictionary-based approach ultimately benefits patentees by providing a claim term with the “full range of its ordinary meaning,” id. at 1202, this approach presents a host of problems with respect to: 1) existing terms that have a unique meaning in the nanotech context, and 2) new terms peculiar to nanotechnology that have yet to be defined in dictionaries or other references. As for existing terms, one potentially serious problem is that such terms are susceptible to a range of definitions depending on the particular dictionary, treatise, or encyclopedia used to define the term, with none of the definitions actually corresponding to how the term is meant to be used in the nanotech context. At best, this problem could result in an erroneous interpretation of the desired scope of the claim; at worst, it could result in a complete misinterpretation of the claimed invention. For example, one frequently used term in nanotechnology is the word “crystal.” Webster's' II New Riverside Dictionary, a well-know lay dictionary, provides the following definition of crystal:

A 3-dimensional structure made up of atoms, molecules or ions arranged in basic units that are repeated throughout the structure.” Webster's II New Riverside Dictionary 169 (Rev. ed. 1996).

By contrast, the Eighth Edition of the McGraw-Hill Encyclopedia of Science and Technology, a technical treatise published in the same time frame as Webster's, provides a more narrow definition of the term, particularly as it pertains to the electronic arts:

A solid in which the atoms or molecules are arranged periodically. … In scientific nomenclature, the term crystal is usually short for single crystal, a single periodic arrangement of atoms. … In electronics the term is usually restricted to mean a single crystal which is piezoelectric. 4 McGraw-Hill Encyclopedia of Science & Technology 630 (8th ed. 1997) (emphasis added).

As may be discerned by these two definitions, a court's interpretation of the claim term (and thus the scope of the claimed invention) would vary appreciably depending on which definition it chose. If the court chose the McGraw Hill definition of “crystal,” the scope of the patentee's claim could be quite narrow. Not only would the term be limited to only a single crystal, but it could be further limited to a piezoelectric crystal if the term pertained to an invention in the electronic arts. By contrast, if the court chose the Webster's definition of crystal, neither the “single crystal” nor the “piezoelectric” limitations would be read into the claim term; as such, the claim term (and the claimed invention) would be interpreted considerably more broadly.

The problem of divergent definitions is further compounded by the fact that a court's choice of a particular definition may in some cases be a function of the technical background of the judge hearing the case. For example, a non-technically versed judge may be inclined to choose a non-technical dictionary definition over a technical one in view of a more user-friendly definition, despite the fact that such a definition might yield an erroneous interpretation of the claim term.

A series of other problems arise when a court is asked to interpret a novel nanotechnology term that has yet to be defined in a dictionary or other reference. As an initial matter, a court might resort to combining dictionaries or other references in order to cobble together a definition based on the claim term's constituent parts, an approach that could easily result in a definition at odds with the patentee's desired meaning. Moreover, if a court decides against attempting to define a new nanotech term by combining dictionaries or other references, the court may ultimately resort to choosing between competing expert testimony for a term's definition, a scenario that could leave a nanotech inventor in no better position in view of the lack of agreement in the field as to many of these terms. From the foregoing, it is clear that the dictionary-based approach presents a number of problems for nanotech inventors, whether the term is a common one used in the new context of nanotechnology, or whether the terminology is completely new and has yet to be defined in a dictionary or other reference.

Significantly, the Federal Circuit has provided nanotech patentees with an escape hatch from the uncertainty associated with the dictionary-based approach. If the patentee acts as his or her own lexicographer by defining claim terms in the patent's specification, the court will interpret the claim terms in accord with the patentee's definition. The court recently reiterated the well-established principle that “a definition of a claim term in the specification will prevail over a term's ordinary meaning if the patentee has acted as his own lexicographer and clearly set forth a different definition.” 3M Innovative Properties Co. v. Avery Dennison Corp., 350 F.3d 1365, 1371 (Fed. Cir. 2003). For example, in U.S. Patent No. 6,500,622, the patentees chose to be their own lexicographers as to the terms “semiconductor nanocrystal” and “quantum dot,” defining those terms as follows:

The terms 'semiconductor nano-crystal,' 'SCNC,' 'quantum dot' and 'SCNC^TM nanocrystal' are used interchangeably herein and refer to an inorganic crystallite of about 1 nm or more and about 1000 nm or less in diameter … SCNCs are characterized by their uniform nanometer size. An SCNC is capable of emitting electromagnetic radiation upon excitation (i.e., the SCNC is luminescent) and includes a 'core' of one or more first semiconductor materials, and may be surrounded by a 'shell' of a second semiconductor material.

It is significant to note that “semiconductor nanocrystal” and “quantum dot” are defined with a rather high degree of particularity; such particularity may or may not be appropriate depending on the particular term. For example, a high level of descriptive detail may be preferable in a case where the subject matter has been the focus of extensive research and development, and there is concern that existing art could potentially invalidate the claims if the invention is defined too broadly. Conversely, less detail may be preferable in the case of pioneering inventions, in which case the realm of prior art is small and a patentee can maximize the claimed subject matter without fear of invalidating art.

In either case, when devising definitions to describe their inventions, patentees should consider reviewing current dictionaries, encyclopedias and treatises, as well as patents and journal articles, to understand the ways others have chosen to describe and/or claim their nanotech inventions. Such research will enable patentees to formulate descriptive definitions for both existing and novel terms, helping to ensure that a court interpreting the patent claims will define the invention as the patentee desires. This approach, in turn, will enable patentees to avoid the potentially negative outcomes associated with the dictionary-based analysis of claim terms.