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…
Click on the link below to read the rest of the DLA Piper briefing.
News from DLA Piper
News from The Lawyer
Briefings from DLA Piper
DLA Piper has released the 1 September 2014 issue of its Health Alert, which focuses on judgments, legislation and reports in the health sector.
DLA Piper’s privacy experts have compiled a list of dos and don’ts for addressing privacy compliance in M&A transactions.
Analysis from The Lawyer
Shearman & Sterling is making its presence felt in the City, squaring up to magic circle firms and looking to muscle in on key relationships. Private equity house Bridgepoint is one outfit that has had its head turned by the US firm.
A new breed of lawyer is smoothing the path for companies entering emerging or unstable jurisdictions