Supreme Court To Evaluate Federal Circuit’s Approach To Definiteness

INTRODUCTION

On January 10, 2014, the Supreme Court granted certiorari on two questions relating to the "definiteness" requirement under 35 U.S.C. § 112(b). Specifically, the Supreme Court will consider (1) whether the Federal Circuit's acceptance of ambiguous patent claims with multiple reasonable interpretations - so long as the ambiguity is not "insoluble" by a court - defeats the statutory requirement of particular and distinct patent claiming, and (2) whether the presumption of validity dilutes the requirement of particular and distinct patent claiming. Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (Jan. 10, 2014) ("Nautilus").

BACKGROUND

Under Section 112(b), the specification of a patent must "conclude with one or more claims that particularly point[] out and distinctly claim[] the subject matter which the inventor or joint inventor regards as the invention."1 A claim that fails to satisfy this requirement may be held to be invalid as indefinite.

If an ambiguous claim is susceptible to multiple interpretations, the Federal Circuit has held that a claim is indefinite "only when it is 'not amenable to construction' or 'insolubly ambiguous'"2 - i.e., where "reasonable...