Supreme Court Rejects Federal Circuit Standard for Definiteness in Nautilus, Inc. v. Biosig Instruments, Inc.

In an opinion authored by Justice Ginsberg on June 2, 2014, the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc rejected the Federal Circuit's standard for determining whether a patent is invalid for indefiniteness. The patent in dispute involved a heart-rate monitor used with exercise equipment. Claim 1 of the patent recites a heart rate monitor that includes a "live" electrode and a "common" electrode mounted "in spaced relationship with each other." The case turned on whether "in spaced relationship with each other" was indefinite under 35 U.S.C. §112, ¶2, which requires that the claims particularly point out and distinctly claim the subject matter that the applicant regards as the invention.

The district court granted summary judgment on the basis that the claim term in question failed the statutory definiteness requirement. The Federal Circuit reversed and remanded, concluding that the definiteness requirement was met so long as the claim is "amenable to construction" and the claim as construed is not "insolubly ambiguous."

The U.S. Supreme Court held that the Federal Circuit's definiteness standard tolerated some ambiguous claims but not others, which does not satisfy the precision that the statute demands. The Court further explained that to tolerate imprecision just short of "insolubly ambiguous" falls short of the public-notice function and fosters a "zone of uncertainty" that discourages innovation.

In place of the Federal Circuit standard, the U.S. Supreme Court adopted the standard that a patent is invalid for indefiniteness if its claims, read in light of the patent's specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. The Court stated that the adopted standard mandates clarity, while recognizing that absolute precision is not attainable.

The Supreme Court vacated and remanded the case to the Federal Circuit to reconsider, under the proper standard, whether the relevant claims of the patent in dispute are sufficiently definite.

Source: Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ___ (2014), available at: http://www.supremecourt.gov/opinions/13pdf/13-369_k53m.pdf

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