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, e.g., Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005).

However, yesterday, in Nautilus, Inc. v. Biosig Inst., Inc., 572 U.S. ___ (2014), the United States 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.

The disagreement in Nautilus focused ultimately on how much claim drafting precision section 112 requires. According to the Court, section 112 “entails a ‘delicate balance’” between the “inherent limitations of language” on the one hand, and “afford[ing] clear notice of what is claimed” on the other hand. Id. at 9-10. Balancing these two concerns, the Court found it prudent to eliminate the “temptation” of purposefully “injecting ambiguity” into patent claims. Id. at 10. “Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those of ordinary skill in the art about the scope of the invention with reasonable certainty.” Id. at 11. In the Court’s view, this new “reasonable certainty” standard for definiteness “mandates clarity, while recognizing that absolute precision is unattainable.” Id.

Commentators and others in the patent bar are already reading the Nautilus opinion as lowering the bar for proving a patent is indefinite. However, much uncertainty remains as to the mechanics of how invalidity will be shown under the Supreme Court’s new standard.

Before, courts could answer the indefiniteness question as a matter of law during claim construction because deciding whether a patent claim was amenable to construction arose out of a court’s “duty as the construer of patent claims.”  See, e.g., Atmel Corp. v. Info Storage Devices, 198 F.3d 1374, 1378 (Fed. Cir. 1999). Now, Nautilus requires an accused infringer to show that a person of ordinary skill cannot be “reasonably certain” about a claim’s definition.  Such a question invites a court to make a factual determination as to what is “reasonable” in connection with construing the claim as a matter of law. If fact-finding on invalidity is involved, the question then becomes whether an accused infringer must prove those facts by “clear and convincing evidence.” While the Supreme Court acknowledges this issue, it left its answer “to another day.” Slip Op. at 13, n. 10.

Claim construction often does not implicate disputed facts because the content of the patent, the file history and the other intrinsic evidence is rarely disputed. Injecting an issue of fact into the analysis – one that will often be disputed - could complicate a court’s duty to construe claims as a matter of law and implicate the standard of review for claim construction decisions, an issue the Supreme Court is presently considering in the Teva Pharms. USA, Inc. v. Sandoz, Inc. case.