US Supreme Court "Definitely" At It Again

Yesterday was a patent double bill from the US Supreme Court.  As our dear blogmeister Jeremy has just posted, it was confirmed that for there to be inducement of infringement, there has to be a direct infringement of the patent by a single entity.

The Supreme Court also issued its decision in Nautilus, Inc. v. Biosig Instruments, Inc., Docket No. 13-369 (2014). This Kat will write about it very briefly, mainly because the pertinent point can be expressed quite concisely.

Another indefinite cat

The case concerned the interpretation of 35 U. S. C. §112, ¶2 that 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 [the] invention.” (Merpel points out that the case refers to the law pre-AIA, but her US friends assure her that the reasoning will apply to the new law as well).  A claim that does not meet this requirement is considered "indefinite".

In a patent belonging to Biosig (U. S. Patent No. 5,337,753) and asserted against Nautilus, relating to a heart-rate monitor used with exercise equipment, an issue arose concerning the term describing two electrodes being "in spaced relationship with each other".  The District Court held the term indefinite in contravention of §112, ¶2.  A majority decision of the Federal Circuit reversed this decision, holding that the test to apply in deciding whether a claim term is indefinite is that the claim is indefinite “only when it is‘not amenable to construction’ or ‘insolubly ambiguous.’”

Justice Ginsberg giving the unanimous decision of the Supreme Court held that this test was wrong, and that the correct test is whether claims, read in light of the specification and the prosecution history, fail to inform with reasonable certainty those skilled in the art about the scope of the invention.

The Supreme Court did not indicate how this test applies to the case before it.  The case is now remanded to the Federal Circuit to apply the test indicated by the Supreme Court.  It will be interesting to see whether under the mandated test the outcome is different in respect of the claim at issue.

Merpel has seen many comments on this case already, and understands that the new test is considered more strict than that proposed by the Federal Circuit, resulting in a bigger challenge for patentees and applicants.