Supreme Court issues opinion in case concerning ambiguous patent claim
Yesterday, the Supreme Court issued its opinion in Nautilus Inc., v. Biosig Instruments, Inc., a patent case that dealt with the standard applied by courts when determining whether patent claims are too ambiguous to meet the statutory requirement of definiteness. Oral arguments in the case were a good predictor for the final opinion, with the Court’s holding closely mirroring the reasoning suggested by their questions. The Court vacated the Federal Circuit’s holding of validity for the patent at issue and remanded with instructions to apply a new standard, which they discussed briefly during oral arguments, to determine definiteness.
In finding the patent valid the Federal Circuit had applied the “insolubly ambiguous” standard for determining definiteness, which required that a patent claim remain insolubly ambiguous, without a discernible meaning, after all reasonable attempts to determine a meaning fail. The Supreme Court rejected this standard, finding that validating claims that fell just short of the “insolubly ambiguous” standard would diminish the public-notice purpose of patent claims and create a “zone of uncertainty” in which innovation could not occur without fear of infringement. The Court also noted that the “insolubly ambiguous” standard could lead to confusion in the district courts, and that there was a risk that that standard could be applied such that validity was all but assured.
In place of the “insolubly ambiguous” standard, the Supreme Court elaborated a new standard which it derived from balancing the need for clarity in patent claims with the recognition that absolute precision is unattainable. Under the new standard, to be valid, “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” However, the Court did not apply the new standard to the facts of Nautilus and instead remanded to the Federal Circuit for further proceedings.
A secondary issue discussed by the Supreme Court was of the presumption of validity for issued patents on the definiteness requirement. One of the reasons given for having a relatively permissive test for determining whether a claim is sufficiently definite was to “accord respect to the statutory presumption of patent validity.” The Supreme Court did not find this reasoning persuasive, and noted in passing that the presumption of validity does not affect the required degree of clarity for patent claims. However, it did not elaborate on what effect the presumption of validity did have when determining whether a patent’s claims are sufficiently definite, and explicitly declined to address either the standard for evaluating evidence of indefiniteness or the level of deference (if any) to be accorded to the patent office’s resolution of disputed factual issues.
The opinion in Nautilus v. Biosig is likely to bring greater uniformity to the analysis used to determine whether claims are indefinite. Under the old standard, courts had varied in the importance they placed on the understanding of those skilled in the art, ranging from treating the “insolubly ambiguous” standard as overriding the need for a patent’s claims to be understandable to one of skill in the art, to treating “insolubly ambiguous” as shorthand for the requirement that those of skill in the art be able to understand the claims. However, yesterday’s decision made clear that the analysis should always occur from the viewpoint of “those skilled in the art,” which will likely cause at least some patents which would have been upheld under the old standard to be invalidated. With that said, the Court did not set upper and lower limits of the “reasonable certainty” required by the new standard, or even explain a framework for how those limits could be determined in any particular case, and so further decisions will be necessary to see exactly how yesterday’s ruling will be applied in practice.