Docket No. 13-369
Supreme Court of the United States
June 2, 2014
Brief Summary: Supreme Court vacated the FC decision and remanded the case for reconsideration under the standard is “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 one to be informed being “a skilled artisan at the time of the patent application, not…a court viewing matters post hoc”) (as opposed to the FC’s “insolubly ambiguous” / “amendable to construction” standard).
Summary: Biosig sued Nautilus for infringement of its US 5,337,753 relating to a heart-rate monitor for use during exercise. The DC granted Nautilus SJ that the claim term “in spaced relationship with each other” (referring to electrodes mounted on the monitor) was indefinite. The FC reversed and remanded, concluding that “a patent passes the §112, ¶ 2 threshold so long as the claim is ‘amenable to construction,’ and the claim, as construed, is not ‘insolubly ambiguous’”. The DC found the claim not indefinite under that review. The SC granted certiorari and heard the case on April 28, 2014. The SC held that the FC’s “insolubly ambiguous” standard (and “amenable to construction”) “tolerates some ambiguous claims but not others” and “does not satisfy the statute’s definiteness requirement”. It determined that that standard “would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty’”. While the Court noted that “some modicum of uncertainty is the ‘price of ensuring the appropriate incentives for innovation’” and patents are addressed to those skilled in the art (not lawyers or the general public), “a patent must be precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of what is still open to them…in a manner that avoids ‘[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims” (citing Festo (US 2002), Markman (US 1996), and United Carbon (US 1942)). The FC decision was therefore vacated and remanded for reconsideration under “[t]he standard adopted here [that] mandates clarity, while recognizing that absolute precision is unattainable” (citing Minerals Separation (US 1916)). That standard is “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 one to be informed being “a skilled artisan at the time of the patent application, not…a court viewing matters post hoc”). Examples of prior decisions or guidance referring to the current FC standard provided are Hearing Components, Inc. (CA Fed. 2010, whether claim terms “can be given any reasonable meaning”), Datamize, LLC (CA Fed. 2005, insolubly ambiguous or not amenable to construction), Exxon Res. (CA Fed. 2001, insolubly ambiguous), and MPEP 2173.02(I) (9th Ed. 2014, describing FC test upholding claim validity “if some meaning can be gleaned from the language”). The Court expressed no opinion as to the validity of Biosig’s patent.