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.
US Supreme Court "Definitely" At It Again US Supreme Court "Definitely" At It Again Reviewed by Darren Smyth on Tuesday, June 03, 2014 Rating: 5


  1. The Supreme Court was saying to the Federal Circuit don't come up with difficult tests that will confuse everyone when you have a difficult judgment to make. Just do your job and make the judgment based on the old test, and we're not going to micromanage you.

    The facts of the case bring in the old conundrum of the extent to which the construction can cover embodiments that don't work. That is very difficult to judge.

    Interesting to see the Supreme Court favouring looking at the relevant technology as part of construction. Reminds me of Arnold's fuzzy boundaries in Generics v Yeda & Teva where he said:
    "… it is necessary to distinguish between claims that are difficult to construe or that have a "fuzzy boundary" on the one hand from claims that are truly ambiguous
    on the other. It is regrettably common for claims to be difficult to construe, but the court will nevertheless strive to give such claims a sensible meaning having
    regard to the inventor's purpose. It is also common for claims to have a fuzzy boundary, because an integer of the claim involves some question of degree or an imprecise functional limitation. It is well established that is not itself objectionable. If a claim is truly ambiguous, so that it is unclear what is the correct test to determine whether or not a product or process infringes,
    however, then the claim is insufficient..."

  2. Anonymous @ 10:54 is completely wrong as to the "we are not going to micromanage you"

    There is NO indication of this thought and in fact the very opposite is a clear lesson.

  3. Also, the notion that this case has anything at all to do with the "covering of embodiments that don't work" conundrum is way off base.

  4. The Federal Circuit probably felt it needed to provide a more rigorous indefiniteness test to help the non-specialist District Courts. But the Supreme Court decided it had gone too far. One can see the merits of both positions.

  5. I notice, for example from the Patently-O blog, that there's been a lot of criticism of the 2 Supreme Court decisions. I think that's very different from the way that UK Court decisions are treated here, perhaps with an over-reverence. In the UK we're probably too deferential to authority.

  6. Anonymous @ 11:59,

    While I am not sure either is exactly right or wrong, I would prefer the US version of an active questioning.

    As to the two decisions currently receiving criticism, well, you have not seen anything yet, as the decision that will please no one (Alice) is yet to come.

  7. Some further commentary from US firm Nixon Peabody with suggestions for drafters of US applications (either direct or via PCT applications) has cropped up here as well

    Looking forward to Alice!


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