In an opinion delivered by Justice Ginsburg for a unanimous court, the Federal Circuit was overruled, although it may wind up being much ado about nothing because it seems that the Supreme Court was concerned with the language used to articulate the indefiniteness standard, not specifically whether the claims at issue were indefinite.
The patent in dispute, U. S. Patent No. 5,337,753 (’753 patent), issued to Dr. Gregory Lekhtman in 1994 and assigned to respondent Biosig Instruments, Inc., concerns a heart-rate monitor for use during exercise. Claim 1 of the ‘753 patent covers a heart monitor, and in two places uses the term “spaced relationship.”
The particular clauses using this term were:
… a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other;
a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other…
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The district court determined that the term was indefinite, the Federal Circuit reversed. According to the Federal Circuit, a claim is indefinite “only when it is not amenable to construction or insolubly ambiguous.” Under that standard, the majority determined, the ’753 patent survived and was not indefinite. The Supreme Court characterized this test as the Federal Circuit tolerating “some ambiguous claims but not others.”
The Supreme Court did not determine whether the claims at issue were indefinite, explaining that the Court has never micromanaged the word-choices of the Federal Circuit as it has sought to define patent law doctrine, but was uncomfortable with the use of “insolubly ambiguous” because it would lead to confusion and uncertainty, and because that particular explanation could be inconsistent with the statute.
The Supreme Court specifically explained that the Federal Circuit test could lead to confusion in the district courts because the test lacks precision, which is the cornerstone of 112(b). With this in mind, the Supreme Court remanded to the Federal Circuit for determination of whether the claims were indefinite, leaving the Federal Circuit to apply the test announced.
The test for indefiniteness provided by the Supreme Court was this:
[W]e read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.
To some extent this case may be much ado about nothing, at least insofar as the parties are concerned. The Federal Circuit did rely on the intrinsic evidence (i.e., the specification and prosecution history) and did determine that one of skill in the art would understand the meaning of the term “spaced relationship.” Therefore, at the end of the day the Supreme Court seems to have taken issue primarily with the way the Federal Circuit articulated what was perceived as a new test. The test cannot suggest that some indefiniteness is tolerable. Either a claim provides clarity and precision, or it does not. To make the determination a Court must look at the specification and prosecution history to determine whether those of skill in the art would understand the scope of the claim with reasonable certainty. That is exactly the analysis undertaken by the Federal Circuit, so don’t be shocked it the Federal Circuit comes out with the same outcome on remand, of course minus the confusing insoluble ambiguity language.