IP: Supreme Court to redefine patent law’s definiteness standard

The Supreme Court will soon attempt to redefine “definiteness” in Nautilus v. Biosig, which could cut down

A patent is not addressed to lawyers, judges, or even the public generally, but to those experienced in the sciences of the invention. And, in the language of the sciences, any description that is sufficient to apprise those so experienced of the definite features of the invention, and to serve as a warning to others of what the patent’s claims cover, is sufficiently definite to sustain the patent. The Supreme Court said so over 100 years ago. But recently, those accused of infringing a patent are more frequently defending their actions by relying on the patent law statute requiring that patent claims be “definite” and pleading that the patent does not properly define the bounds of what actions constitute infringement. There may be instances where the defense has merit if only because the issue of infringement turns on the clarity of those bounds. But where that is arguably not the case, the defense is often colored with hyperbole about the poor quality of the Patent Office’s examination of the application and the Federal Circuit’s omniscient comprehension of the issued patent’s scope. It’s no surprise, therefore, that the Supreme Court will soon attempt to redefine “definiteness” in Nautilus v. Biosig.

The Nautilus dispute has a long history dating to 2004, when Biosig sued Nautilus for patent infringement. In turn, Nautilus twice successfully requested the Patent Office to reexamine Biosig’s patent. The original lawsuit was dismissed to permit the Patent Office’s reexaminations. Eventually, the Patent Office confirmed the propriety of Biosig’s patent. Accordingly, Biosig sued again. Following the district court’s Markman decision construing the asserted patent claims, Nautilus again requested the Patent Office to reexamine the patent. But the Patent Office denied that request because Nautilus raised no question of patentability the Office had not already considered. Against that history, the district judge summarily concluded the term “spaced relationship” (among two electrodes on the claimed heart rate monitor) had no meaning to him or anyone. The summary judgment is shocking if only because the Patent Office — on four separate occasions — did not contend that the patent claims were indefinite for reciting that term. The Federal Circuit reversed, recognizing the record evidence established that ordinarily-skilled scientists could readily understand the bounds of the “spaced relationship” through conventional tests using standard equipment in existence long before the patent.

Contributing Author

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Sandip H. Patel

Sandip H. Patel is a partner at Marshall, Gerstein & Borun LLP. His practice focuses on patent prosecution and contested patent disputes in...

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