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Supreme Court Changes Standard for Patent Indefiniteness under 35 USC 112 ¶2

Posted on Jun 2, 2014 in Blog

On June 2, 2014, the US Supreme Court rejected as imprecise the Federal Circuit’s existing standard for patent claims indefiniteness under 35 USC 112 ¶2. Nautilus, Inc. v. Biosig, Instruments, Inc., 572 U.S. __ (2014).

In a patent dispute over hand-held heart rate monitor electrodes found on many exercise machines, the Federal Circuit had found the expression “in a spaced relationship with each other” in U.S. Patent 5,337,753 (assigned to Biosig) as satisfying the definiteness requirement of section 112 by applying its test that the term need only be “amenable to construction” and not “insolubly ambiguous.”

The Supreme Court, in an opinion written by Justice Ginsberg, reversed and remanded to the Federal Circuit with instructions to use the standard that indefiniteness may be found where “the claims read in the 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.” The opinion recognizes the competing interests of the patentee, who wants “some modicum of uncertainty” in the claim and the interest of the public in having clear notice of what remains in the public domain. The Court found the Federal Circuit’s 2005 “insolubly ambiguous” standard diminished the public notice function of the definiteness requirement, which fosters an “innovation-discouraging zone of uncertainty” since inventors would be unclear as to what is still open to the pubic when reviewing a patent claim.


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