35 U.S.C. Section 112(b) requires that claims "particularly [point] out and distinctly [claim]" the invention. Against that backdrop, patent applicants want broad claim terms, whereas patent examiners want narrower claim terms.

The Federal Circuit, in In re Packard (May 2014), previously addressed the question of patent claim indefiniteness - in the context of pre-issuance, i.e., while the patent application is being prosecuted. The Federal Circuit explained that pre and post issuance require different standards of review.

The US Supreme Court, in Nautilus v. Biosig (June 2014), has now explained the standard of review for claim indefiniteness - in a post-issuance circumstance, i.e., after the patent issues.

Bioseg filed suit for patent infringement. The Biosig patent related to a heart monitor for an exercise machine - like a treadmill. The monitor is contained in a cylinder that a user grips with both hands. Thereby, each hand contacts two electrodes that are in "spaced relationship with each other."

Bioseg argued that "spaced relationship" meant the distance between the electrodes. Nautilus argued that it was a distance greater that the width of each electrode.

The district court found that it meant a "defined relationship between the [two electrodes] on one side of the cylindrical bar and the same or different defined relationship between the [two electrodes] on the other side of the cylindrical bar." That, according to the district court, did not inform '"anyone what precisely the spacing should be,' or supply 'any parameters' for determining the appropriate spacing."

The Federal Circuit found the claim definite because a claim is indefinite "only when it is 'not amendable to construction' or 'insolubly ambiguous.'" That test takes into consideration intrinsic evidence and "certain inherent parameters of the claimed apparatus, which to a skilled artisan may be sufficient to understand the metes and bounds of 'spaced relationship.'"

The Supreme Court began by explaining that the "definiteness requirement must take into account the inherent limitations of language" and that "[s]ome modicum of uncertainty . . . is the 'price of ensuring the appropriate incentives for innovation.'" Yet, "a patent must be precise enough to afford clear notice of what is claimed, thereby 'apprising the public of what is still open to them.'"

According to the Supreme Court, Section 112 requires more than a district court being able to "ascribe some meaning" to the claim term. Further, Section 112 does not "tolerate imprecision just short of that rendering a claim 'insolubly ambiguous'".

Therefore, the definiteness requirement under Section 112 is met when the "patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty."

PRACTICE POINTER: It is not clear if the US Supreme Court has brought more clarity to the requirement of indefiniteness. What is "reasonable certainty" will likely be the focus of much argument.

In the meantime, patent prosecution practitioners might consider using the USPTO's Glossary pilot program whereby applications include a glossary of definitions.

© Michael A. Shimokaji, 2014 The contents of this article represent the opinions of the author and not those of the author's law firm or clients

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