Supreme Court Takes On The Federal Circuit's 'Extravagant' Indefiniteness Standard

Yesterday, the Supreme Court heard oral argument in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369. Biosig sued Nautilus in 2004 over a patent covering heart rate monitor technology associated with exercise equipment. The district court invalidated the claims for being indefinite, however the Federal Circuit reversed concluding that the claims would have been understood by one of ordinary skill in the art, even if that person required a small amount of experimentation using standard equipment and methods. The claims at issue require that two electrodes be in a "spaced relationship" from each other "whereby" the system would function. The principal issue presented is whether the claims are invalid as indefinite under 35 U.S.C. § 112 ¶ 2 since the term "spaced relationship" is amenable to different reasonable constructions. During yesterday's argument, however, the Justices indicated that this case may signal the end to the Federal Circuit's "insolubly ambiguous" standard for indefiniteness. Unfortunately, the Justices did not express any enthusiasm for the alternative standards proposed by Nautilus, Biosig, or the U.S. Government, leaving it to the Court to fashion a better-currently unknown-standard.

The principal question presented by Nautilus to the Supreme Court, and addressed by yesterday's oral argument was: "Does the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not 'insoluble' by a court—defeat the statutory requirement of particular and distinct patent claiming?"

In its briefing and argument Nautilus stressed that the term "spaced relationship" is amenable to more than one reasonable construction, and that therefore the claims are indefinite since they do not apprise one of ordinary skill as to the proper scope of the claims. Biosig, relying largely on the Federal Circuit's analysis below, stressed that while multiple reasonable constructions were plausible, one of ordinary skill in the art would have understood the scope of the claims.

Through yesterday's argument, the Supreme Court indicated a desire to replace, or at least clarify, the "insolubly ambiguous" standard currently applied by the Federal Circuit, which can be prone to misinterpretation by the District Courts. However, the Supreme Court was also clearly frustrated with the lack of any clear alternative standard that could be applied reliably in the future.

A number of Justices...