One of the most distinguishing characteristics of the field of patent law is its airtight attention to technological detail. A patent owner enjoys the exclusive rights to make, use, sell, and offer for sale the underlying invention covered by the patent. Every word and every image represents painstaking effort taken by an inventor. Thin is the line between understanding and confusion when details are so intricate. And in order to gain a patent grant from the United States Patent and Trademark Office an inventor, and the attorney of said inventor, must make sure to provide proper definition to each facet of the invention.
The Supreme Court of the United States recently weighed in on this issue. On Monday, June 2, the Supreme Court issued an opinion in the Nautilus, Inc. v. Biosig Instruments, Inc. case. The case involved an infringement suit, as Biosig alleged that Nautilus improperly sold exercise machines which contained technology patented by Biosig. Nautilus had not obtained a license from Biosig. In 2011 the U.S. District Court for the Southern District of New York (“District Court”) granted Nautilus’ motion for summary judgment and found the Biosig patent claims insufficiently definite. The second paragraph of statute 35 U.S.C. 112 was the source of Nautilus’ indefiniteness challenge. According to said paragraph each patent claim must “particularly [point] out and distinctly [claim] the subject matter which the applicant regards as [his/her] invention.” The Biosig patent contained the term “spaced relationship,” and Nautilus asserted that the court ought to render indefinite said term, as construed. The District Court agreed, finding indefiniteness according to the second paragraph of 35 U.S.C. 112 and invalidating the Biosig patent. According to the District Court, the “spaced relationship” term “‘did not tell [the court] or anyone what precisely the space should be,’ or even supply ‘any parameters’ for determining the appropriate spacing.”
On appeal the Court of Appeals for the Federal Circuit (“Federal Circuit”) reversed the holding of the District Court. The Federal Circuit held that a claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” The Federal Circuit found that one skilled in the art would recognize the meaning of the “spaced relationship” term sufficiently. Thus the Federal Circuit found that the claim, and the entire patent, ought to survive a definiteness review. The Supreme Court of the United States proceeded to grant certiorari and review the Federal Circuit opinion.
In its unanimous opinion the Supreme Court vacated the judgment of the Federal Circuit and remanded the case for further proceedings. The Supreme Court stated several impactful points in formulating its decision. First, it clarified that one should read claims “in light of the patent’s specification and prosecution history” when assessing definiteness. Second, when a court considers whether one skilled in the art would be able to practice an invention based on the written description of the patent covering said invention, said court should consider the viewpoint “at the time the patent was filed.” The Supreme Court then underscored the need for a “delicate balance” when evaluating definiteness as it considered Nautilus’ argument that “a patent is invalid when a claim is ‘ambiguous, such that readers could reasonably interpret the claim’s scope differently’” and Biosig’s argument that “the patent [only] provide reasonable notice of the scope of the claimed invention.” The Supreme Court also recognized that the definiteness requirement commands adherence to “the inherent limitations of the language” while still ensuring that patent claims “afford clear notice of what is claimed.” Reconciling the varying viewpoints the Supreme Court held that the Federal Circuit’s “insolubly ambiguous” and “amenable to construction” expressions created a standard “more amorphous than the statutory definiteness requirement allows.” Thus the Supreme Court vacated the judgment of the Federal Circuit and remanded the case for further proceedings.
The Supreme Court’s analysis highlights the complicated task of testing whether the claims of a patent are definite enough to survive the 35 U.S.C. 112 bar. Inventors and patent owners usually want their claims to be broad in order to expand coverage. Adversaries of said inventors and patent owners usually want said claims to be narrow and specific in order to be able to gain patent coverage on technological innovations not covered by said claims. Courts can struggle when attempting to strike a balance between the competing interests. It is well-established that one skilled in the art ought to be able to fully understand the coverage of a patent claim. But the patent community often grapples with clarifying exactly how far and how specific patentees must go in order to specifically and sufficiently explain said coverage. In the Nautilus case the Supreme Court struck down a nebulous standard offered by the Federal Circuit. While the decision reflects the need to be patient when determining a proper standard it reminds us of the glaring need for clarity and consistency. The quest continues.