In anticipation of Nautilus v. Biosig, many expected that the Supreme Court would relax the Federal Circuit's so-called "insolubly ambiguous" test for determining definiteness under 35 U.S.C. § 112, ¶ 2. Under the Federal Circuit's test, patents had been notoriously difficult to invalidate under indefiniteness – even if the patent had ambiguous claims. The Supreme Court in Nautilus ultimately crafted a new definiteness test in place of the "insolubly ambiguous" test, which will likely make it easier to invalidate patents under indefiniteness. However, a closer look at the decision and oral argument shows that the Supreme Court's decision may have only relabeled the test while maintaining the application of the Federal Circuit's test.

At issue in Nautilus was which test should be used in determining definiteness under § 112, ¶ 2. While Biosig supported upholding the Federal Circuit's test that a claim is indefinite only when it is "not amenable to construction" or "insolubly ambiguous," Nautilus and the U.S. Patent & Trademark Office (PTO) proposed replacing the Federal Circuit's test with alternative tests. Nautilus argued that a claim is indefinite when it is ambiguous such that readers could reasonably interpret the scope of the claim differently. On the other hand, the PTO argued that a claim is indefinite when a person skilled in the relevant art would not reasonably understand what is claimed.

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Topics:  Definiteness, Indefiniteness, Nautilus Inc. v. Biosig Instruments, Patent Infringement, Patent Litigation, Patents, SCOTUS

Published In: Civil Procedure Updates, Intellectual Property Updates

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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