Supreme Court’s Nautilus Decision Articulates New Standard for Determining Indefiniteness
By Brent E. Matthias - June 30, 2014
On June 2, 2014, the Supreme Court articulated a new standard for determining patent invalidity due to indefiniteness.
In Nautilus, Inc. v. BioSig Instruments, Inc., No. 13-369, the Court overruled the Federal Circuit’s previous approach that required a claim to be “amenable to construction” and not “insolubly ambiguous,” replacing it with a “reasonable certainty” standard. While this new guidance from the Court appears to lower the threshold for invalidating a patent for indefiniteness, the true impact of this decision is likely minimal and will not be fully known until the standard is applied at the Federal Circuit level.
The words of a claim define the scope of exclusive rights provided under a patent. Accordingly, the specific claim language provides notice to the public as to what constitutes infringement. To minimize uncertainty over the scope of a claim, the Patent Act requires claims to particularly point out and distinctly claim the subject matter regarded as the invention. 35 U.S.C. §112(b). Consequently, a claim will be invalidated if it is not found to be sufficiently definite as required by the statute.
Prior to the Supreme Court’s decision in Nautilus, the Federal Circuit developed a standard which found a claim to be indefinite if it was “not amendable to construction” or “insolubly ambiguous.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (CA Fed. 2005). To apply this standard, the court would consider intrinsic evidence (such as the claim language, the specification, and the prosecution history) as would be understood by a skilled artisan at the time the application was filed.
In Nautilus, the Supreme Court rejected the “insolubly ambiguous” standard developed by the Federal Circuit and replaced it with a new test it believes better complies with the statutory requirement for indefiniteness. Specifically, to be sufficiently definite the Court requires:
…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.
Nautilus at 11. According to the Court, this standard better serves the public notice function while acknowledging inherent limitations of language. Additionally, the Court suggested that the new standard provides a “meaningful definiteness check” that will remove incentive for patent applicants to intentionally “inject ambiguity into their claims.” Id. at 10.
While Nautilus changes the language of the standard used to determine indefiniteness, the practical effect of this change is uncertain. It is quite possible that actual analysis previously applied by the Federal Circuit, albeit under the “insolubly ambiguous” moniker, would still meet the rigor now articulated by the Nautilus Court. Indeed, the Nautilus opinion itself acknowledges that the “Federal Circuit’s fuller explications of the term ‘insolubly ambiguous”…may come closer to tracking the statutory prescription,” Id. at 12, and therefore the new standard may not be a significant departure from the previous approach. Accordingly, it remains to be seen how the Federal Circuit will apply the new standard and whether their analysis will be appreciably different.
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