Academic journal article Michigan Law Review

Understanding Nautilus's Reasonable-Certainty Standard: Requirements for Linguistic and Physical Definiteness of Patent Claims

Academic journal article Michigan Law Review

Understanding Nautilus's Reasonable-Certainty Standard: Requirements for Linguistic and Physical Definiteness of Patent Claims

Article excerpt


Imagine that you are trying to follow a recipe. The recipe directs you to separate three eggs. It tells you to "place one half of the separated eggs into a bowl" and "discard the remaining half." After adding the other ingredients and transferring everything to a pan, the recipe instructs you to "place the pan some distance away from the center of the oven" for proper cooking. This recipe requires you to fill in some gaps. First, it requires you to decide whether to use the yolks and discard the whites or to use the whites and discard the yolks. Then, when the time comes to put the pan in the oven, you must judge how far from the center is an appropriate distance. You could place the pan only a couple of inches from the center, or you could place it very near the edge of the oven rack. Perhaps your experience with other recipes will provide you with clues for solving these problems. But, on its face, the recipe is ambiguous, and you might reject it as unhelpful.

A patent applicant must avoid some of the same problems with ambiguity as the author of this recipe. To obtain patent protection, an inventor must first submit an application to the U.S. Patent and Trademark Office ("USPTO").1 The application must conform to the provisions in the Patent Act2: It must include both a description of the invention3 and claims spelling out the inventor's rights.4 The application must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor . . . regards as the invention."5 This definiteness requirement forces inventors to delineate the metes and bounds of patent claims so that the public has sufficient notice as to which parts of the field remain open to future inventors.6 If the applicant fails to specify sufficiently definite claims, then the USPTO will refuse to grant the patent, leaving the inventor without any protection for the ideas contained in the application.

Recently, the Supreme Court has shown a remarkable interest in patent law.7 From 1982 through 2000, the Court heard only eight patent cases.8 But since 2000, it has heard more than two dozen patent cases.9 Plus, the Court has started hearing types of patent cases that it has not heard in a long time. For example, the Court's recent decision in Samsung Electronics Co. v. Apple Inc.10 was the first time in more than 100 years that the Court granted certiorari for a design-patent case.11 Commentators have speculated about the driving force behind the Court's renewed interest in patent law.12 Regardless of the underlying reasons, in 2014, the Court's interest led it to recalibrate the definiteness requirement in Nautilus, Inc. v. Biosig Instruments, Inc. (Nautilus II).13

The implications of the Supreme Court's decision in Nautilus II are still not completely clear. On a fundamental level, the Court rejected the Federal Circuit's "insoluble ambiguity" standard for definiteness, holding that it is not enough for a court to be able to give a claim any meaning.14 Instead, the Court held that a person having ordinary skill in the art ("PHOSITA") must understand the invention's scope "with reasonable certainty."15 But the legal system is still working out how to apply the Court's holding. Some commentators have stated that the new standard is just the old standard in a different form.16 District courts have applied the new standard in different ways.17 And despite its patent expertise, even the Federal Circuit conceded that it did not completely understand how to move forward under the new standard.18 Courts, parties involved in patent litigation, and inventors would benefit from a more detailed framework for the definiteness requirement.

This Note argues that courts might understand the Supreme Court's reasonable-certainty standard for the definiteness requirement under a framework with two necessary elements: linguistic definiteness and physical definiteness. Part I reviews the definiteness requirement by discussing its purpose, statutory grounding, and judicial standards before and after Nautilus. …

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