Modicum of Uncertainty

Nautilus, Inc. v. Biosig Instruments, Inc., 572 U.S. ______ (2014) brings to light conflicting views on how to interpret the requirement of 35 USC 112, second paragraph, also known as the definiteness requirement. 35 USC 112, second paragraph, states that “[T]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.”

Nautilus argued that if a claim is “ambiguous, such that readers could reasonably interpret the claim’s scope differently,” the claim does not meet the definiteness requirement. On the other hand, Biosig argued that the patent need only “provide reasonable notice of the scope of the claimed invention.” The Federal Circuit took Biosig’s argument a step further by holding that if a claim is “amenable to construction” and not “insolubly ambiguous,” the claim passes the definiteness requirement.

However, the Supreme Court objected to the “amenable to construction” and “insolubly ambiguous” standard as lacking the precision required by 35 USC 112, second paragraph. While the Supreme Court acknowledged that absolute precision is unattainable given the inherent limitation of language, the Supreme Court also held that “[t]o tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty’.”