The Supreme Court recently decided the case of Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ___ (2014) and addressed one previously unclear area for determining “definiteness” under 35 U.S.C. Section 112, Paragraph 2. The Court reversed the Federal Circuit’s previous test and held that a claim is indefinite if its claims “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
In Nautilus, Biosig Instruments, Inc. (Biosig) sued Nautilus, Inc. (Nautilus) for patent infringement in 2004. Biosig is the assignee of U.S. Patent No. 5,337,753 (“the ’753 patent”), which is directed towards a heart-rate monitor on exercise equipment. Nautilus sought reexamination of the ’753 patent, and Nautilus agreed to dismiss the claims without prejudice, pending the reexamination. Nautilus, slip op. at 5-6. The Patent and Trademark Office confirmed the patentability of the ’753 patent’s claims. Its patent intact, Biosig restarted its infringement proceedings.
During claim construction, the District Court focused on the claim language regarding electrodes “mounted…in spaced relationship with each other.” Nautilus argued that the patent provided no indication of the proper spacing of the electrodes, despite evidence that some minimum distance between the electrodes must exist. The District Court agreed, finding the patent claims indefinite under 35 U.S.C. § 112 and granting summary judgment to Nautilus. Section 112, second paragraph states: “[t]he specification shall 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.” The District Court held that the patent was not sufficiently definite because the claim language did not tell one of ordinary skill in the art how to space the electrodes.
The Federal Circuit reversed and remanded the District Court’s decision. The Federal Circuit applied the then-existing standard which held a claim may be indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” Biosig Instruments, Inc. v. Nautilus, Inc., 715 F. 3d 891, 898 (Fed. Cir. 2013) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d 1342, 1347 (Fed. Cir. 2005)). Under this standard, the Federal Circuit found the term “spaced relationship” definite because the claim language, the specification, and the prosecution history provided an individual skilled in the art with sufficient information to understand the limitations of “spaced relationship.” Specifically, the appeals court found that the distance would necessarily be greater than zero, but less than the size of a person’s hand, since a single hand needed to touch both electrodes.
The United States Supreme Court granted certiorari and subsequently reversed and remanded the Federal Circuit’s holding of definiteness. In its unanimous decision, the Court sought to balance the competing arguments that a patent is invalid where there are multiple reasonable interpretations of a claim versus a patent is only invalid if it does not provide reasonable notice of the claimed invention’s scope. The Court realized that while absolute precision may be unattainable, the definiteness requirement “mandates clarity.” Nautilus, slip op. at 11. The Court struck down the “insolubly ambiguous” standard as confusing because it allows a patent to make verbal sense, while still failing the public-notice requirement of definiteness. Instead, the Court adopted the standard 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.” Id. at 1. Furthermore, “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.”Id. at 2 (quoting Minerals Separation, Ltd. v. Hyde, 242 U. S. 261, 270 (1916)). The Court then remanded the case for proceedings consistent with its opinion.
In striking down the “insolubly ambiguous” standard, the Court noted that, while it should not “micromanage the Federal Circuit’s particular word choice,” it must ensure that the applicable test is “at least probative of the essential inquiry.” Nautilus, slip op. at 12 (internal quotations removed). That is, the Federal Circuit’s tests of “insolubly ambiguous” and “amenable to construction” left courts and parties without clear guidance. This discussion by the Court of the test’s name may indicate that the Court does not intend as drastic of a shift in application of the definiteness test as one may initially expect from the outcome.
Two points of issue must be made with respect to the Court’s holding in Nautilus. First, while the definiteness requirement described in section 112, second paragraph applies to patent claims during both prosecution and litigation, the Nautilus holding only impacts the definiteness requirement during litigation. During prosecution, the Patent and Trademark Office gives a patent claim its “broadest reasonable interpretation consistent with the specification.” MPEP Section 2111. Second, while the Nautilus decision specifically relates to the pre-America Invents Act (AIA) statutory version of section 112, second paragraph, that same language has been adopted by post-AIA section 112(b). The two statutes are nearly identical with the term “applicant” replacing “inventor or a joint inventor” in the post-AIA version. This similarity in language may suggest that the Nautilus test for definiteness is equally applicable in post-AIA-related litigation.
Authored by Chris Davis and Joe Dubis.
The views expressed are solely those of the authors and not necessarily those of Merchant & Gould.