February 19, 2019

February 18, 2019

Subscribe to Latest Legal News and Analysis

U.S. Supreme Court Makes It Easier to Knock Out Patents For Indefiniteness in Nautilus, Inc. v. Biosig Instruments, Inc.

On June 2, 2014, the United States Supreme Court unanimously ruled 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 doing so, the Court overturned the Federal Circuit’s previous standard for patent claim definiteness under 35 U.S.C. §112, ¶2.  The previous standard was permissive, rooted in the idea that a patent claim passes the definiteness test so long as the claim was “amenable to construction” and not “insolubly ambiguous.”  By rejecting the Federal Circuit’s “insolubly ambiguous” standard, the Supreme Court has likely lowered the bar for invalidating patents as indefinite.

Writing for the Court, Justice Ginsburg recognized that the definiteness requirement involves a balancing act.  The requirement “mandates clarity, while recognizing that absolute precision is unattainable.”  However, the opinion also noted that absent a meaningful standard for definiteness, patent applicants would have powerful incentives to inject ambiguity into their claims and thereby expand their rights.  In view of these opposing interests and concerns, the Court held that the Federal Circuit’s “insolubly ambiguous” standard for determining indefiniteness caused confusion in the lower courts and diminished the intended public notice function of definiteness under 35 U.S.C. §112, ¶2.  Thus, the Court adopted a purportedly clearer standard based around one of ordinary skill in the art.

Given that the new standard enunciated by the Court suggests a lower bar than the previous Federal Circuit rule, it is likely that many more indefiniteness challenges will be raised in the courts and the USPTO.  The Supreme Court’s new standard, however, remains murky enough that the true impact will not be clear for some time as litigation on this issue proceeds.  In the meantime, patent applicants and litigants alike should take note of the new standard for indefiniteness and consider how it may affect both their claim drafting and litigation strategies.

© 2019 Neal, Gerber & Eisenberg LLP.


About this Author

Gregory J. Leighton, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm

Gregory J. Leighton is a member of Neal Gerber Eisenberg’s Intellectual Property & Technology Transactions practice group and is also a registered patent attorney. Greg’s practice involves both patent prosecution and the protection and enforcement of various forms of intellectual property. One key focus of Greg’s practice is controversies regarding intellectual property rights in the chemical and life sciences areas. Some of his recent representative matters in this space include successfully representing clients in patent disputes before federal courts and the United States...

Kevin C. May, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm

Kevin C. May is a trial lawyer who focuses his practice on intellectual property and complex commercial litigation.

Before joining Neal Gerber Eisenberg, Kevin spent 15 years litigating complex cases at one of the world’s largest firms. Kevin now leverages the experience and skills he gained during that time to offer the same highly sophisticated level of representation from a far more cost-effective and client-friendly platform.

Kevin has extensive experience litigating cases involving intellectual property rights, including patents, copyrights, trademarks and trade secrets. He has successfully represented clients of all sizes, from Fortune 100 companies to Internet start-ups, in a wide variety of industries. His intellectual property clients have included such companies as Navistar, Owens-Illinois, Integra Life Sciences, Cooper Industries and CareerBuilder, and his cases have involved a myriad of technologies, from the relatively simple to the highly complex.