Nautilus v. Biosig (Supreme Court 2015) (SCOTUS ROUND II)
In Nautilus (2014), the Supreme Court significantly heightened the standard for definiteness in patent cases – now requiring that claim scope be delineated with “reasonable certainty.” Previously, the Federal Circuit had only invalidated claims that were both “insolubly ambiguous” and not amenable to construction.
On remand, the Federal Circuit took-in the new standard, but again ruled that the “spaced relationship” limitation in Biosig’s patent was not problematic. That decision (and a series of others) have suggested that, despite the Supreme Court decision, indefiniteness is still a very tough-sell in infringement litigation.
Now, the case again has been petitioned to the Supreme Court. Nautilus asks two questions:
… To perform [its] public-notice function, a patent claim must be clear the day it issues. This Court accordingly rejected the Federal Circuit’s post hoc “amenable to construction” standard: “It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” But, the remand panel again did the opposite. It copied and pasted much of its opinion this Court had vacated. It did not even mention the original prosecution history. Instead, it again viewed the claim post hoc in view of statements made in Patent Office proceedings 15 years after the patent issued. And, it again relied upon a purely functional distinction over a structurally identical prior-art design as supposedly providing sufficient clarity. The questions presented are:
1. Is a patent claim invalid for indefiniteness if its scope is not reasonably certain the day the patent issues, even if statements in later Patent Office proceedings clarify it?
2. Is a patent claim invalid for indefiniteness if its scope is distinguished from prior art solely by a functional requirement, rather than by any structural difference?
The petition has been supported by two amici filings. The first filed by a group of operating companies – including Garmin and SAS – all of whom have been accused of infringing what they allege are indefinite patents. The second amicus brief was filed by a joint effort of the Electronic Frontier Foundation (EFF) and Public Knowledge.