Supreme Court Refines Definiteness Standard in Patent Cases

June 24, 2014

Patent Law35 U.S.C.A. § 112(b) (§ 112, ¶ 2 for applications filed before September 16, 2012) requires the specification in a patent application to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”  This “definiteness” requirement ensures that any patent issuing from the application will have clear boundaries.  Otherwise, patent owners would have a vaguely-defined, yet powerful, monopoly, and third parties would be left guessing as to what would or wouldn’t constitute infringement.

Of course, even when the Patent and Trademark Office decides that the definiteness requirement has been met, litigation on that point can still ensue.  The Federal Circuit has approached these cases by stating that a claim satisfies the definiteness requirement if it is “amenable to construction” and, as construed, not “insolubly ambiguous”.

Nautilus, Inc. v. Biosig Instruments, Inc. was a fairly typical indefiniteness case involving a patent directed to a heart rate monitor used in exercise equipment.  The facts and specifics of the case aren’t particularly relevant, but the claim term at the center of the dispute was “in spaced relationship with each other.”

Expert Witness bannerWhat is relevant is that the Supreme Court took the opportunity to reject the “amenable to construction”/”insolubly ambiguous” standard in a decision citing two Thomson Reuters treatises (Patent Claim Construction in the Federal Circuit, by Edward Manzo, and Moy’s Walker on Patents, by Carl Moy).

Writing for the Court, Justice Ginsburg pointed out that there is a delicate balance between the degree of uncertainty that is “the price of ensuring the appropriate incentives for innovation” and the need to provide the public with adequate notice of what is claimed.  With those competing interests in mind, the Court held that § 112, ¶ 2 (this was a pre-September 16, 2012 application) mandates that “a patent’s claims, viewed in light of the specification and prosecution history, [must] inform those skilled in the art about the scope of the invention with reasonable certainty.”  The “amenable to construction” and “insolubly ambiguous” formulations lack the necessary precision to carry out that mandate and can lead to confusion among the lower courts.

The Court stated:

We conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the “insolubly ambiguous” standard, we hold 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.

In vacating the Federal Circuit decision, the Court declined to apply this new standard to the facts of the case and simply remanded back to the Federal Circuit.