In its June 2, 2014 Nautilus, Inc. v. BioSig Instruments, Inc. decision, the U.S. Supreme Court rejected as inadequate the Federal Circuit's "insolubly ambiguous" test for meeting the 35 U.S.C. § 112 definiteness requirement. Under the § 112 definiteness requirement, patent specification must conclude with one or more claims particularly pointing out and distinctly claiming the subject matter regarded as the invention. Under the Federal Circuit's test, a patent claim met the § 112 definiteness requirement as long as the claim was “amenable to construction,” and the claim, as construed, was not “insolubly ambiguous.” In the Nautilus decision, the Supreme Court criticized the Federal Circuit's standard as one that tolerates some ambiguous claims but not others, and the Court found that the "insolubly ambiguous" standard does not satisfy the § 112 definiteness requirement. The Supreme Court's replacement test to determine whether a claim meets the § 112 definiteness requirement is as follows: A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention…
By Erica Hines