To secure a patent, the claims being sought must be new, useful and non-obvious when compared to the prior art. In addition, the claims of the patent must be drafted to “particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.” 35 U.S.C. § 112. This is an important condition to patentability, for it “affords clear notice of what is claimed.” When the claims fail to convey the scope of the invention with sufficient clarity, they can be found invalid as being “indefinite.”
On June 2, 2014, the Supreme Court addressed the standard for determining “indefiniteness.” Specifically, the unanimous opinion of the Court, authored by Justice Ginsburg, held “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.” Nautilus, Inc. v. Biosig, Instr., Inc., ___U.S.___, June 2, 2014 (emphasis added). In expressing this holding, the Court rejected the Federal Circuit’s standard, which would find a claim sufficiently definite so long as it was “amenable to construction” and not “insoluably ambiguous.”
The language of the Court’s new standard for indefiniteness—i.e, “reasonable certainty…about the scope of the invention”—will be an easier standard for those challenging the validity of a patent to satisfy than the “insoluably ambiguous” standard. That is certainly the intent of the Supreme Court. The Supreme Court explicitly stated that “tolerat[ing] imprecision just short of that rendering a claim ‘insoluably ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty'…against which this Court has warned.”
Despite the lower threshold for indefiniteness established by Nautilus, the ultimate impact of this decision will take time to unfold as the lower courts interpret and apply this new standard. In particular, the question of how much ambiguity can be tolerated in a claim before “reasonable certainty” will be found wanting will be developed on a case-by-case basis. Indeed, the Supreme Court recognized that absolute clarity is not achievable and that “[s]ome modicum of uncertainty…is the price of ensuring the appropriate incentives for invention.” Since nearly every patent dispute involves underlying disputes regarding the scope and meaning of claim terms, certainly it cannot be enough that two sides (or two opposing experts) dispute the meaning of a claim term for a claim to lack “reasonable certainty.” Something more than a dispute must be present to lead a court to conclude that the patent is not “precise enough to afford clear notice of what is claimed.”
The Supreme Court did not set out bright line rules for applying its standard, but it did provide some guidance to the lower courts for the framework for evaluating patent claim definiteness. For example, “definiteness is to be evaluated from the perspective of someone skilled in the relevant art,” “at the time the patent was filed,” and the “claims are to be read in light of the patent’s specification and prosecution history.” These points, however, are not new. Claim construction, which is a predicate for indefiniteness, has long been viewed through the eyes of a person of skill in the art using the specification and prosecution history to inform the meaning of the claims. Thus, while informative, this analytical framework does not mark a departure from past practice.
Though the full implications of Nautilus will take time to develop, patent owners and patent practitioners obviously will need to take the new, lower threshold into account as they defend or challenge patents and as they draft and prosecute claims. We do not believe that the application of the standard should require departure from the claim-by-claim analysis that has always been used when evaluating claim validity. But while it has always been good practice to include claims of varying scope, it may now also be prudent to include claims of varying specificity and precision. Claims that are drafted broadly using generalized terms, or terms of degree (such as “substantially,” “about,” etc.) potentially offer the greatest claim scope, but are more susceptible to a definiteness challenge. Having additional claims that add specificity may prove to be even more important under the new “reasonable certainty” standard. For parties challenging the validity of a patent claim, this new standard may open the door for additional claims of invalidity based on indefiniteness. However, Nautilus’ new standard may invite several factual inquiries that could make indefiniteness challenges difficult to resolve on summary judgment in many cases.
While the Supreme Court was concerned that the prior standard could “leave courts and the patent bar at sea without a reliable compass,” even under the new standard, rough seas and navigational challenges lie ahead of us.