Chinta & Fratangelo LLP

Contact the author: Andrew Berks
Nautilus, Inc. v. Biosig Instr.. Inc., No. 13-369 (S. Ct. 6/2/2014) Opinion by Ginsburg.

The definiteness requirement, 35 U.S.C. §112(b) (AIA, effective 9/12/2012; previously §112 second para.) requires that a patent  “specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” The Federal Circuit standard for this requirement has long been that a “claim is indefinite only when it is not amenable to construction or insolubly ambiguous.” Teva Pharms. USA, Inc. v. Sandoz, Inc., 723 F.3d 1363, 1368 (Fed. Cir. 2013). The court here rejects this language and holds that a claim is indefinite if it fails to inform a person skilled in the art, “with reasonable certainty,” of the scope of the invention when read in light of the specification and the prosecution history.

The Nautilus case involves heart rate monitors on exercise equipment, which have metal electrodes that a user grasps to get a heart rate reading. The disputed claim term was that the electrodes are “mounted … in a spaced relationship with each other.” Slip op. at 4. The patent in dispute, US 5,337,753, owned by Biosig, was reexamined at Nautilus’ request when the dispute began. In the reexamination, the USPTO affirmed the patent, concluding that the ‘753 patent was not anticipated or obvious. In the ensuing patent infringement litigation at the District Court, Nautilus prevailed on summary judgment following claim construction. The District Court held that the term “spaced relationship” was indefinite, because the claim did not define what the space should be or specify any parameters for determining appropriate spacing.

The Federal Circuit reversed and remanded, holding that there was sufficient information in the intrinsic record to inform a person of skill in the art what the spacing should be under its standards of “amenable to construction” and not “insolubly ambiguous.”

The Supreme Court reversed and remanded.  The analysis starts with a discussion of the level of imprecision §112(b) tolerates. Ginsburg notes this is a “delicate balance,” of the inherent limitations of language, a modicum of uncertainty that is the “price of ensuring appropriate incentives for innovation,” and the appropriate audience for patents, which are those skilled in the relevant art. On the other hand, patents “must be precise enough to afford clear notice of what is claimed.”

Ginsburg asserts that the “amenable to construction” and “insolubly ambiguous” standards lack the precision required by the statute and can “breed lower court confusion.” A court cannot ascribe some meaning to a patent’s claims. The inquiry should focus on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing the matter post-hoc. Ginsburg suggests that the “insolubly ambiguous” standard diminishes the public notice function and would “foster the innovation-discouraging ‘zone of uncertainty.'” Slip op. at 11-12. The court says that the “amenable to construction” or “insolubly ambiguous” terminology can “leave the courts and patent bar at sea without a reliable compass.”

The new standard is that §112(b) requires “that 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.” Slip op. at 11. “The definiteness requirement, so understood, mandates clarity.” Id.

Comment. One could argue that the former Federal Circuit standard allowed courts to read clarity into an unclear claim. This practice is now prohibited. This new standard is consistent with the doctrine that courts may not  re-draft claims, and must construe the claims as written. Ecolab, Inc. v. FMC Corp., 569 F.3d 1335, 1344 (Fed. Cir. 2009); Chef Am., Inc. v. Lamb-Weston, Inc., 358 F.3d 1371, 1374 (Fed. Cir. 2004); see also Exxon Chem. Patents v. Lubrizol Corp., 64 F.3d 1553, 1563 (Fed. Cir. 1995) (“[A court] is not free to read the claims as they might have been drafted, even if as drafted they do not accomplish what the inventor may have intended.”).