bethShaw-0580editConvertedProfile-e1360002102239Featured Expert Column

Beth Z. Shaw, Brake Hughes Bellermann LLP

Patent claims define the scope of a patentee’s rights. Therefore, patent claims are required to be “definite” and to point out the actual invention described in the patent. Once a patent issues from the United States Patent and Trademark Office, however, that patent is presumed valid.

The United States Court of Appeals for the Federal Circuit has interpreted this definiteness requirement of the patent statute in many cases over the years. This year, the Supreme Court will evaluate whether the Federal Circuit used the right framework in Nautilus, Inc. v. Biosig Instruments, Inc.

Like many patent cases, Nautilus has a somewhat complicated procedural history. The patents and accused products relate to heart rate monitors mounted on exercise equipment. Biosig sued Nautilus for patent infringement, but the district court found Biosig’s patent claim indefinite as a matter of law, based at least in part on Biosig’s submissions to the Patent Office during a prior reexamination of the patent. On appeal, the Federal Circuit reversed. The majority panel (Judges Newman and Wallach) held that the disputed claim language could be construed and was therefore not “insolubly ambiguous.” Judge Schall concurred. The Federal Circuit noted that if the meaning of the claim is discernible, even if the conclusion is “one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.” By embracing this standard, the court accords “respect to the statutory presumption of patent validity,” and protects “the inventive contribution of patentees, even when the drafting of their patents has been less than ideal.”

The Supreme Court will examine how the Federal Circuit’s acceptance of patent claims with multiple reasonable interpretations–so long as the ambiguity is not “insoluble” by a court–correlates with the statutory requirement of particular and distinct patent claiming. Additionally, the Supreme Court will examine how the presumption of validity affects the requirement of particular and distinct patent claiming.

Various companies that operate in the software arena filed an amicus brief in support of Nautilus’s petition for writ of certiorari, arguing that the Patent Office alone cannot solve the problem of indefinite patents, and that the Federal Circuit’s refusal to “police” indefinite patents distorts patentee behavior at the Patent Office. The amicus noted that the Patent Office has recently increased efforts to apply a revitalized indefiniteness standard during the patent application process. Yet, the amicus argued, a failure by the courts to demand precision in claim drafting reinforces incentives for patent applicants to write vague claims.

This is a truly significant case which has far-reaching implications in all areas of patent law. The meaning and “clarity” of patent claims are at the heart of virtually every patent case. As such, the decision in Nautilus may prove to be the case with some of the most far-reaching implications in 2014 and beyond.