Nautilus, Inc. v. Biosig Instruments, Inc. – Definiteness Now Requires Reasonable Certainty

On June 2, the Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, __ U.S. __ (June 2, 2014) (Ginsburg, J.) ruled that the prior tests for indefiniteness, insoluble ambiguity and amenable to construction, are no longer appropriate. The new test for definiteness requires reasonable certainty.

Insoluble ambiguity has been the high hurdle defendants have attempted to jump for more than twelve years since the Federal Circuit introduced that phrase in Exxon Research and Engineering v. United States, 265 F. 3d 1371, 1375 (Fed. Cir. 2001). Combined with the requirement for clear and convincing evidence to invalidate a claim, indefiniteness was not often a successful defense to patent infringement allegations.

The Supreme Court has narrowed the scope of valid claims and inserted more certainty into the requirements for claim construction by telling judges not to try to guess the scope of claim but instead look to what one of ordinary skill in the art would have understood at the time of the application.

It remains unclear how the courts and the Federal Circuit will apply this new standard, and the Supreme Court did not offer any guidance with regard to the Biosig patent at issue reminding us that it was “a court of review, not of first view.” Cutter v. Wilkinson, 544 U.S. 709, 718, n.7 (2005).

The opinion is a struggle to balance the need for certainty in the business and patent world with the need to allow some space for the inherent limitations of language. The Court’s reasonable certainty test only allows for a modicum of uncertainty in a valid patent. That is, valid patents provide those skilled in the art with a modicum less than complete certainty about the scope of the claims and defendants should not have to wonder whether their products are covered.

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