SCOTUS: Higher Bar Required for Broad Patents in Nautilus v. Biosig

In a decision likely to have a significant impact on the validity of broad patents, the United States Supreme Court reversed a Federal Circuit decision in Nautilus Inc. v. Biosig Instruments Inc. today.

The issues at hand in the case were (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.

Prior to today’s decision, the Federal Circuit deemed that a patent claim passes the 35 USC §112, ¶2 threshold as long as the claim is “amenable to construction”, and the claim, as construed, is not “insolubly ambiguous”.  The Supreme Court held that the Federal Circuit’s test tolerates “some ambiguous claims but not others” and it does not satisfy the §112, ¶2 definiteness requirement.

Instead of the “insolubly ambiguous” standard, the Supreme Court stated that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, 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 express an opinion as to the validity of the patent in suit, and instead remanded back to the Federal Circuit to decide this issue based on the newly defined standard.

Today’s ruling is likely to hamper enforcement efforts of extremely vague and overly broad patents; the types of patents that have been used notoriously by many non-practicing entities in recent years.  This increased bar for definiteness may cause NPEs to mitigate patent invalidity risks by re-assessing how often and against whom to file suit.

Full-text of Supreme Court’s decision can be viewed here.

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