The Supreme Court recently clarified the standard for determining invalidity of a patent claim for indefiniteness under 35 U.S.C. § 112, second paragraph. Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. _ (June 2, 2014). Specifically, the court unanimously held that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, fail to inform, with reasonable certainty, those of skill in the art about the scope of the invention.” Nautilus, slip op. at 1. This new “reasonable certainty” standard is much stricter than the overruled Federal Circuit standard, which only permitted a claim to be invalidated under 35 U.S.C. § 112, second paragraph if the claim was not “amenable to construction” and was “insolubly ambiguous.” Id.
I. Impacts on AIA trials -
The impact of the new “reasonable certainty” standard may even be greater in an AIA trial (i.e. an Inter Partes Review (IPR), a Post Grant Review (PGR) or Covered Business Method review (CBM)) than in district court litigation for two reasons: (1) differences in the claim construction standard; and (2) differences in the burden of invalidity. First, claim construction is broader in AIA trials, which grant claims their “broadest reasonable construction in light of the specification of the patent in which it appears.” 37 C.F.R. §§ 42.100(b), 42.200(b), 43.300(b). In contrast, in litigation, claims are given their “ordinary and customary meaning.” See e.g. Philips v. AWH Corp., 415 F.3d 1303, 1312-1313 (Fed. Cir. 2005).
Please see full article below for more information.
Firefox recommends the PDF Plugin for Mac OS X for viewing PDF documents in your browser.
We can also show you Legal Updates using the Google Viewer; however, you will need to be logged into Google Docs to view them.
Please choose one of the above to proceed!
LOADING PDF: If there are any problems, click here to download the file.