Supreme Court Redefines The Standard For Indefiniteness In Patent Cases

In Nautilus, Inc. v. Biosig Instruments, Inc., a unanimous Supreme Court reversed the Federal Circuit and redefined the standard for indefiniteness under Section 112, ¶ 2. No. 13-369, 572 U.S. ___ (2014) ("Slip Op."). The Court found that the Federal Circuit's previous indefiniteness standard, under which a claim was indefinite only if it was either "not amenable to construction" or was "insolubly ambiguous" (see Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005)), "lack[ed] the precision § 112, ¶2 demands," and could "breed lower court confusion." Slip Op. at 11-12. Under the new standard articulated by the Court, the definiteness requirement of § 112, ¶ 2 "require[s] 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.

Section 112 and the Federal Circuit's Indefiniteness Standard

35 U.S.C. 112, ¶ 2 requires that "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."1 Patents or patent claims that fail to meet this "definiteness" standard of Section 112 are invalid. 35 U.S.C. § 282.

Under the Federal Circuit's prior interpretation of these statutes, "[o]nly claims 'not amenable to construction' or 'insolubly ambiguous'" are indefinite—in other words, "the definiteness of claim terms depends on whether those terms can be given any reasonable meaning." Datamize, 417 F.3d at 1347. Under the prior standard, "claims [need not] be plain on their face in order to avoid condemnation for indefiniteness[.]" Exxon Research & Eng'g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). "If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree,... the claim [is] sufficiently clear to avoid invalidity on indefiniteness grounds. Id.

Background on Patent and Opinions Below

In the case below, Biosig filed suit against Nautilus accusing it of infringement of U.S. Patent No. 5,337,753 (the "'753 patent"), which relates to monitoring of heart rate during exercise. Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 893-94 (Fed. Cir. 2013). According to the Biosig patent, previous methods of measuring heart rate measurement were often inaccurate, because these...