Richards Layton & Finger

U.S. Supreme Court Adopts New Indefiniteness Standard

June 25, 2014

In a decision that will doubtless lead to more patent claims being challenged as indefinite, the U.S. Supreme Court in Nautilus v. Biosig Instruments, 134 S. Ct. 2120 (2014), unanimously held that a claim is indefinite if it fails to inform one of ordinary skill in the art of the scope of the invention with reasonable certainty. According to the court, the indefiniteness standard under review—not amenable to construction or insolubly ambiguous after construction—leaves an intolerable zone of uncertainty contrary to statute and the goals of patent law. But the court remanded the case to the U.S. Court of Appeals for the Federal Circuit for review in light of the new standard—with some suggestion that the Federal Circuit's indefiniteness analysis in practice may have been in accord with the new standard anyway. As a result, parties will be looking to the Federal Circuit to see just how vulnerable claims that were secure under the previous standard may now be to indefiniteness challenges.