Indefiniteness

The opinion for the first of three highly anticipated patent cases taken up by the Supreme Court in the October Term of 2013 has been released. In Nautilis, Inc. v. Biosig Instruments, Inc., the Supreme Court continued its recent trend of redirecting the Federal Circuit toward a more limited view of patent rights.

This case addressed “indefiniteness” under 35 U.S.C. §112, ¶2. The disputed claim term regarded two electrodes “mounted … in a spaced relationship with each other.” The claim including this language recited two sets of such electrodes, each set on one side of an elongate member (e.g., cylindrical bar). The District Court construed the term to mean “there is a defined relationship between the [first] electrode and the [second] electrode on one side of the cylindrical bar and the same or a different defined relationship between the [first] electrode and the [second] electrode on the other side of the cylindrical bar”. Despite being able to construe the term, the District Court granted a summary judgment motion agreeing that the term was indefinite under §112, ¶2, because the term as construed “did not tell [the court] or anyone what precisely the space should be,” or supply “any parameters” for determining the appropriate spacing.

The Federal Circuit reversed and remanded stating that a term is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous’”. The term was construed by the District Court, meeting the first of the Federal Circuit’s two prongs of indefiniteness. Additionally, the Federal Circuit reasoned that the term was not “insolubly ambiguous”, because the intrinsic evidence (claim language, specification, and prosecution history) provided “inherent parameters … which to a skilled artisan may be sufficient to understand the metes and bounds of ‘spaced relationship’”. For example, the intrinsic evidence made plain that the spacing “cannot be greater than the width of a user’s hands” and cannot be “infinitesimally small, effectively merging the [first] and [second] electrodes into a single electrode with one detection point”.

The Supreme Court vacated the judgment of the Federal Circuit holding that the terms “amenable to construction” and “insolubly ambiguous”, “lack the precision §112, ¶2 demands.” The Supreme Court reasoned:

[it] cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” … against which this Court has warned.

The indefiniteness standard the Supreme Court adopted is that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Notably, the Supreme Court indicated that the indefiniteness inquiry applied in practice by the Federal Circuit may be “closer to tracking the statutory prescription”; however, the expressions “amenable to construction” and “insolubly ambiguous” are not “probative of the essential inquiry” and can “leave courts and the patent bar at sea without a reliable compass”.

The full opinion of the Supreme Court can be found here: Nautilis, Inc. v. Biosig Instruments, Inc.

Summary By: Aaron Pederson, associate attorney at Fogg & Powers LLC; Posted: August 19, 2014

The information contained herein is not intended as legal advice but merely conveys general information about law and/or court decision(s).  This information should not be relied upon or used as a substitute for consultation with a licensed professional.  Please consult a licensed professional to obtain advice with respect to any particular legal issue or problem.