The case of Nautilus v. Biosig has been anticipated as one that could be a mover for a few industries — the software industry in particular — and for its potential to have an impact on the future of “patent indefiniteness” in general across all patent infringement cases. The phrase “insolubly ambiguous” has been at the core of the debate between the two companies who have been arguing over the validity of a patent that Nautilus claims is not valid because of its indefiniteness. The patent is Biosig’s, and the company maintains intellectual property over technology used to measure heart rates using electrical waves through machines at typical gyms and other home-gym sets. The determination of whether a patent is definite, and therefore valid, is whether a person of ordinary skill in the art can determine the boundaries of the claim, as Rich Steeves for InsideCounsel writes. And this is the central debate that the Supreme Court ruled upon this week, despite the court leaving aside a decision on the actual Nautilus v. Biosig case, and returning it to the Federal Circuit. 

The importance of the Supreme Court’s decision lies in its tightening of the holds on what definiteness means within patent law, and how accused infringers can potentially bring cases to court on the grounds of “insolubly ambiguous” tests. Kaye Scholer IP Counsel Dina Hayes — in an interview with InsideCounsel — sheds some light on what the impacts of the case mean for future patent cases: 

“It will be most successful in challenges to patents that are being enforced a number of years past their issuance. At a time when technology changes so rapidly, the vulnerable patents are those where the intrinsic record as viewed by one of ordinary skill in the art cannot (with reasonable certainty) be understood to cover the newer technologies.”

Validity challenges are now more prominently on the table because of this ruling; the definiteness standard for patents has been thusly determined by the Supreme Court, creating the opportunity for more patents to be invalidated. Of course, these invalidations have yet to be determined, but through the more narrow definition that the Supreme Court has defined, there could be a refocusing of patent standard. Hayes noted that the bringing the language back to the statute itself is at the heart of the matter.

But she also notes that the case is not particularly out of line with previous rulings. The difference is the structure in which the decision will impact future cases. She says: “While the Supreme Court’s decision in Nautilus v. Biosig is, in substance, not a drastic departure from the preceding body of law governing indefiniteness, the Court has certainly tightened up the definiteness test by going back to the language of the statute itself. The Court’s decision may result in indefiniteness challenges from accused infringers that would not have challenged patents under the ‘insolubly ambiguous’ test, which had been used by the Federal Circuit as a shorthand for an indefiniteness analysis.”

Patent trolls could also be at risk here, as a result of this new ruling. Hayes says that, while the Nautilus v. Biosig does not affect patent trolls directly, any tightening of patent law does. And, the ruling demonstrates the attempt to “reign in the patent law requirements back to the language of the statutory provisions.” 

The case has been sent back to the previous court to actually settle the Nautilus v. Biosig debate, with the new measures instructed by the Supreme Court as the precedent for the Federal Circuit’s proceedings.


Further reading:


Setting your business up for success: Building a strong patent portfolio

Supreme Court rules for Limelight in patent infringement appeal 

Enforcing your patent portfolio: Tips to think about before enforcing your patents