The claims in a patent are supposed to inform others about the scope of patent protection afforded under the patent so people know what the can and cannot be marketed regarding the patent. In particular, the Patent Act requires that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” This is also known as the definiteness requirement. The claims provide notice to others about the breadth of patent rights under a patent. In other words, if one makes, uses, sells, offers for sale, or imports a device incorporating all of the limitations of a claim in a patent, then that entity is infringing the patent rights of the patent owner and may be sued for patent infringement. Of course if the claims are ambiguous then the patent owner can twist the meaning of words to better suit its needs by broadening them to encompass new products made by others, or by narrowing them to avoid potentially invalidating reverences found by others. The amount of potential ambiguity that is permitted thus affects the patent owner’s ability to restrain competition and also notice to others as to what is protected under the patent.
The claims are located at the back of the patent. For example, a portion of Claim 1 for the patent at issue (USPN 5337753) in Nautilus, Inc. v. Biosig Instruments, Inc., (S.Ct. 2014) is shown below.
Although the claims are supposed to inform others what is covered under the patent’s claims, the English language itself is limited. Sometimes words cannot perfectly convey the exact boundaries of the scope of the patent’s claims. As such, the limitations of language force the courts to accept a certain amount of ambiguity in the scope of the claims so that the patent system can work.
The Federal Circuit developed a line of cases which stated that the language of the claims is definite as long as the language of the claims is “amenable to construction” or “insolubly ambiguous.” Put simply, if a court can ascribe some meaning to the patent’s claims, then the claims are definite.
The Supreme Court rejected the Federal Circuit’s standard and held that the standard to determine whether the claim is definite is as follows:
“a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
The Supreme Court raised the standard for satisfying the definiteness requirement. Instead of merely being able to ascribe some meaning to words used in the claims, the claim wording must now be capable of informing the public as to the what the invention is “with reasonable certainty.”
In Nautilus, the invention involved a way to more reliably reading a person’s heart rate when working out. The heart rate was detected by measuring electrical signals emanating from the heart. The current heart rate monitors were unreliable because the electrical signal measuring device also detected electrical signals caused by muscle movements of the arms. To cancel out the electrical signals from muscles other than the heart, the invention included live and common electrodes in spaced relationship with each other, as shown in the underlined claim language above.
Under the Federal Circuit’s standard for definiteness, the patent owner, the alleged infringer, the District Court and the Federal Circuit ascribed four different meanings to the “spaced relationship” limitation. Biosig (Patent Owner) contended that the words “spaced relationship” refered to the distance between the electrodes. Nautilus (Alleged Infringer) contended that the words must be a distance greater than the width of each electrode. The District Court construed the words to mean that there was a “defined relationship” between the two electrodes. The Federal Circuit reversed and construed the words “spaced relationship” to have upper and lower limits.
The Supreme Court rejected the Federal Circuit’s standard for determining whether a claim is definite since under its standard, four different definitions were provided. The Supreme Court provided its own “reasonable certainty” standard as stated above. However, the Supreme Court refused to apply its own standard to this case and say what “spaced relationship” meant. Instead the Supreme Court remanded with instructions to the lower courts to decide the case consistent with its new test. Thus, in Nautilus, the Supreme Court raised the standard for the definiteness requirement. The patent claims must now inform the public as to the scope of the claims with reasonable certainty, when read by a person of ordinary skill in the art.
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