Supreme Court Tosses Federal Circuit Standard for "Claim Definiteness" Requirement

June 2, 2014

By: N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

The Supreme Court today, in Nautilus, Inc. v. Biosig Instruments, Inc., unanimously rejected The Federal Circuit's test for indefiniteness under Section 112 of the Patent Laws.  Specifically, the Supreme Court rejected the standard imposed by the Federal Circuit that claims be "amenable to construction" or not "insolubly ambiguous," to satisfy the statutory threshold that claims "particularly point out and specifically claim subject matter."  The Supreme Court held that standard lacks the "precision" demanded by the statute, and that 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.'"  Adding to the holding, the Court stated that "[t]he expressions 'insolubly ambiguous' and 'amenable to construction,' which permeate the Federal Circuit's recent decisions concerning §112, ¶2, fall short in this regard and can leave courts and the patent bar at sea without a reliable compass."

The Federal Circuit will now need to develop a new, heightened standard for precision in claim terminology that provides the "reliable compass" mandated today by the Supreme Court.

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June 2, 2014

By: N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

The Supreme Court today, in Nautilus, Inc. v. Biosig Instruments, Inc., unanimously rejected The Federal Circuit's test for indefiniteness under Section 112 of the Patent Laws.  Specifically, the Supreme Court rejected the standard imposed by the Federal Circuit that claims be "amenable to construction" or not "insolubly ambiguous," to satisfy the statutory threshold that claims "particularly point out and specifically claim subject matter."  The Supreme Court held that standard lacks the "precision" demanded by the statute, and that 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.'"  Adding to the holding, the Court stated that "[t]he expressions 'insolubly ambiguous' and 'amenable to construction,' which permeate the Federal Circuit's recent decisions concerning §112, ¶2, fall short in this regard and can leave courts and the patent bar at sea without a reliable compass."

The Federal Circuit will now need to develop a new, heightened standard for precision in claim terminology that provides the "reliable compass" mandated today by the Supreme Court.

PDF FileView as PDF

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