In anticipation of Nautilus v. Biosig, many expected that the
Supreme Court would relax the Federal Circuit's so-called
"insolubly ambiguous" test for determining definiteness
under 35 U.S.C. § 112, ¶ 2. Under the
Federal Circuit's test, patents had been notoriously difficult
to invalidate under indefiniteness – even if the patent had
ambiguous claims. The Supreme Court in Nautilus ultimately crafted
a new definiteness test in place of the "insolubly
ambiguous" test, which will likely make it easier to
invalidate patents under indefiniteness. However, a closer look at
the decision and oral argument shows that the Supreme Court's
decision may have only relabeled the test while maintaining the
application of the Federal Circuit's test.
At issue in Nautilus was which test should be used in determining
definiteness under § 112, ¶ 2. While Biosig supported
upholding the Federal Circuit's test that a claim is indefinite
only when it is "not amenable to construction" or
"insolubly ambiguous," Nautilus and the U.S. Patent &
Trademark Office (PTO) proposed replacing the Federal Circuit's
test with alternative tests. Nautilus argued that a claim is
indefinite when it is ambiguous such that readers could reasonably
interpret the scope of the claim differently. On the other hand, the PTO argued that a claim is indefinite when
a person skilled in the relevant art would not reasonably
understand what is claimed.
In attempting to adopt a definiteness test, the Justices at the
oral hearing grappled with how much ambiguity is tolerated under
§ 112. The "insolubly ambiguous" test had a bright
line of tolerated ambiguity: if the claims after construction were
insolubly ambiguous. Nautilus's test sought to lower the
standard of tolerated ambiguity: whether readers could reasonably
interpret the scope of the claim differently. The PTO's test
included analysis for determining improperly ambiguous claims:
whether there was no front-runner construction substantially better
than another construction.
In evaluating these different solutions to the amount of tolerated
ambiguity, the Supreme Court did not appear to appreciate many
differences between the Federal Circuit's test and the
alternative proposed tests proposed by Nautilus and the PTO.
Instead, the Supreme Court emphasized the common ground between the
tests, that: 1) definiteness be evaluated from the perspective of
one skilled in the art 2) at the time the patent application was
filed, and 3) that the claims be read in light of the specification
and prosecution history. In light of the Supreme Court's
perceived agreement among the parties, there did not appear to be a
need for the Supreme Court to deviate too far from the status quo
in the first place.
To focus on the essential inquiry of definiteness, the Supreme
Court replaced the "insolubly ambiguous" test with a new
definiteness test that requires that those skilled in the art
understand the scope of the claim with reasonable certainty in
light of the specification and prosecution history. The new test
acknowledges that absolute precision is unattainable under the
definiteness requirement, but explains that all that is required is
reasonable certainty.
However, this new test does not appear to be different from the
Federal Circuit's application of its "insolubly
ambiguous" test. That is, the Supreme Court acknowledged that
in practice the Federal Circuit's test had been
"shorthand" for a more thorough analysis. This more
thorough analysis included determining whether reasonable efforts
at claim construction resulted in a definition that does not
provide sufficient particularity and clarity to inform skilled
artisans of the bounds of the claim. In other words, the Federal
Circuit's test looked at how those skilled would understand the
scope of the claim in light of the specification and prosecution
history (being determined by traditional claim construction tools).
Thus, the Supreme Court's new test appears to include the same
elements as the Federal Circuit test in practice.
At the oral argument, several justices of the unanimous panel saw
no need to disrupt the Federal Circuit's application of the
"insolubly ambiguous" test. For example, Chief Justice
Roberts seemed unpersuaded by Nautilus's pleas to vacate the
Federal Circuit's standard. "I don't see much
disagreement among any of you about the standard or what's
wrong with the Federal Circuit's articulation," he stated (emphasis added). In response
to the PTO's proposed test, Chief Justice Roberts wondered
whether the Federal Circuit's test had already been following
the Patent Office's proposed test all along.
Hence, the Supreme Court's "new definiteness test"
appears merely to replace the shorthand terms "insolubly
ambiguous" and "amenable to construction" with the
explicit analytical steps for which those terms stand. This new
test was made to guide courts in correctly and uniformly applying
the essential definiteness inquiry. The Supreme Court's new
test in determining definiteness may not dramatically change the
actual application of the indefiniteness analysis, at least at the
Federal Circuit. That being said, time will tell how the new test
will be developed.
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