The Supreme Court's decision in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (2014) appeared to raise the bar for patent clarity. However, the true effects of the decision will not be seen for some time, if ever. In the meantime, practitioners would be prudent to focus on developing patents with clear claims of reasonable scope.
Section 112, ¶2 of the Patent Act requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." The Federal Circuit previously held that a patent claim passes this threshold "only when it is ‘not amenable to construction' or `insolubly ambiguous.'" 715 F. 3d 891, 898 (2013) (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d 1342, 1347 (CA Fed. 2005)). In Nautilus, the Supreme Court rejected this long-used test as permitting too much ambiguity, instead holding that "a patent is invalid for indefiniteness if its claims, read in 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." Slip op. at 11. Declining to apply the new standard, the Supreme Court remanded to the Federal Circuit for further consideration.
The Supreme Court's Nautilus decision can be seen as an attempt to limit the assertion of patents made overly broad through claim ambiguity. While we can expect to see more invalidity challenges by defendants looking to leverage the new standard, it is not yet known whether the landscape has meaningfully shifted in favor of alleged infringers. The Federal Circuit's decision on remand will be the first important signal of things to come.
Further guidance by the Federal Circuit in applying the "reasonable certainty" standard may not end up being much different from prior Federal Circuit precedent, and the Federal Circuit may uphold the patent claims on remand just as it did when applying the old standard. The Supreme Court acknowledged as much by stating that the "Federal Circuit's fuller explications of the term ‘insolubly ambiguous,"  may come closer to tracking the statutory prescription." Id., slip op. at 12. Further bringing into question whether Nautilus will reinvigorate invalidity under Section 112, ¶2, the Supreme Court appeared to leave intact the presumption of validity of patents such that challenges under Section 112, ¶2 still must meet the clear and convincing standard.
Time will tell whether the updated claim definiteness standard under Section 112, ¶2 pans out as a more useful tool for bringing clarity to claims and invalidating overly broad patents. In the interim, consider the following practice points.
Strive For Clarity: Practitioners who purposely inject ambiguity in claims do so at their own (or their client's) peril. The Nautilus decision represents yet another reason why patentees should endeavor to draft clear claims supported by a thorough specification.
More Varied Claims: More claims, varied in perspective, language, and/or scope, provide a greater chance that at least one will survive an attack under Section 112, ¶2. Furthermore, it may be preferred to have a greater number of narrow claims that fit together to cover an area of technology than to have fewer claims that are individually broader to cover the same area. Continuation applications may be used to develop additional claims that are varied in perspective, language and/or scope.
Rich Disclosure: Patent applications should disclose varied embodiments with ample description and figures. Claims will be at their weakest under Section 112, ¶2 when they are open to interpretations that are unsupported in the specification.
Reissue: For issued patents at risk of failing the new standard, reissue may be used to narrow or clarify claims by amendment. Such amendment options are not allowed in litigation. It may be worthwhile to consider resolving ambiguity issues via reissue before asserting a patent that contains a serious indefiniteness question.