Supreme Court eases standard for proving patent definiteness — or does it?

By Andrew N Stein

Section 112, paragraph 2 of the Patent Act requires that a patent ‘conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor regards as the invention’. The Federal Circuit consistently has held that this statutory requirement is met, and a claim is not invalid as indefinite, so long as the claim is ‘amenable to construction’, and is not, as construed, ‘insolubly ambiguous’. See, for example, Datamize LLC v Plumtree Software Inc, 417 F.3d 1342, 1347 (Fed. Cir. 2005).

However, in Nautilus Inc v Biosig Inst Inc, 572 US ___ (2014), the US Supreme Court unanimously held that the Federal Circuit’s indefiniteness standard bred ‘lower court confusion’ because it ‘lack[ed] the precision §112, ¶2’ demands. Slip Op. at 11–12. Writing for the court, Justice Ruth Bader Ginsburg went so far as to say that the standard ‘can leave courts and the patent bar at sea without a reliable compass’ Id. at 13…

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