The Supreme Court Defines New Indefiniteness Standard

02 June 2014 IP Litigation Current Blog

Today the Supreme Court issued an opinion in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, which was previously discussed here. The unanimous court, in  an opinion by Justice Ginsburg that looked to the language of the statute and Supreme Court precedent articulated the following standard:

[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.

Recognizing its role as a “court of review, not of first view,” the Supreme Court declined to apply the standard to the facts at issue, remanding the issue to the Federal Circuit.

The opinion makes clear that the Federal Circuit’s prior standard, which upheld claims as definite so long as they were “amenable to construction” and not “insolubly ambiguous” once construed, “does not satisfy the statute’s definiteness requirement.” The Supreme Court did however acknowledge that some Federal Circuit decisions, despite using the ”amenable to construction” and “insolubly ambiguous” language “come closer to tracking the statutory prescription.”

The Supreme Court’s decision in Nautilus will likely have broad implications for all currently pending patent cases where definiteness is at issue.

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