SCOTUS Clarifies Patent Indefiniteness Test

litigation lawyer Atlanta

The Supreme Court of the United States (SCOTUS) has struck down the Federal Circuit’s recent patent indefiniteness test.  In its June 2 opinion, the high court held that the lower court’s “insolubly ambiguous” standard for patent claim scope is insufficiently clear and definite..


In Nautilus, Inc. v. Biosig Instruments, Inc., the Federal Circuit interpreted Section 112, paragraph 2 of the 2011 America Invents Act.  In its 2013 ruling on the case, the Federal Circuit set forth a test for meeting 112, paragraph 2, requiring a patent’s claims only to be “amenable to construction” and “not insolubly ambiguous.” Under that standard, patent claims could be  more indefinite than prior interpretations of the federal patent laws and still be upheld.


The high court rejected the Federal Circuit’s test as too indefintie, instead ruling that, for an inventor to meet the 112, paragraph 2 requirements, he or she must show “reasonable certainty” of the meaning of  patent claims.


At issue in this case was the meaning of the term “spaced relationship” in patent claims for a heart rate monitor.  The district court ruled that the term “spaced relationship” did not supply sufficient information to the alleged infringer, Nautilus, for it to determine whether or not its activities infringed upon the Biosig patent.  The Federal Circuit disagreed applying the new “amenable to construction” and “not insolubly ambiguous” test.  Now the Supreme Court has sided with the district court, which the Federal Circuit had overruled.


Patent holders have been closely watching the high court’s interpretation of patent indefiniteness, with an eye toward what this might mean for pending patent infringement cases before the Federal Circuit. Many alleged infringers are now breathing a sigh of relief.   The opinion clarifies the test under Section 112, paragraph 2, and makes is easier for alleged patent infringers to succeed with patent indefiniteness defenses, and will potentially open up vague patents to more invalidity challenges.   The USPTO’s treatment of patent claim definiteness requirements will presumably be affected by this decision, although whether the agency imposes more stringent requirements for individual patent claims remains to be seen, and how exactly this plays out in patent prosecution on an individual basis is unknown.


If you have patent questions, or if your business needs help with competitors infringing on your company’s patents, or has received a notice of alleged patent infringement, James J. “Jim” Thomas II, although not a patent lawyer,ha experience working on patent litigation with top patent lawyers. Jim can help you with the analysis, evaluation, and resolution of existing and potential litigation including in intellectual property disputes. Visit online, or give Jim a call at 404-869-5248 to set up a free consultation.

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