Page 11 - Litigation

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Litigation | MONDAY, MAY 5, 2014 | S11

Patents
to reorient the law as it has done in recent

cases on patent eligible subject matter, i.e.,
Bilski v. Kappos and Mayo v. Prometheus.8 In
« Continued from page S7
ruling, the court may use the presumption
issue of claim construction that involves a of validity issue to more signiicantly change
court choosing among possible claim inter- the balance between inventors and the pub-
pretations. But Nautilus’ test essentially says lic. A holding that courts should not use the
if a claim needs to be construed, then it is presumption of validity to justify picking an
WE'VE EXPANDED. But our invalid for indeiniteness. Contrary to Nau- ambiguous construction would signiicantly
tilus’ test, the Supreme Court has long held alter indeiniteness law and patent practice

WORLD STILL REVOLVES that “in a case of doubt, where the claim is as a whole.
fairly susceptible of two constructions, that
one will be adopted which will preserve to Practice Tips
around YOU.
the patentee his actual invention.”7 Thus,
the mere fact that a patent requires some Irrespective of what the Supreme Court
interpretation cannot lead to an invalid claim. decides, patent attorneys can start preparing
Nautilus is essentially asking the court to tear for the decision now.
down the patent system and start over, an Litigants involved in pending patent litiga-
Thanks to our
unlikely outcome.
tion may want to begin reevaluating indeinite-
recent merger, our irm, formerly With regard to the Supreme Court’s sec- ness issues in light of the impending change
Holtz Rubenstein Reminick, has an even ond question presented, Nautilus argues that in the law. The high standard to show indei-
broader depth and breadth of resources to solve our
indeiniteness should not be determined in niteness under current Federal Circuit law
view of the statutory presumption of validity. has typically made this issue a lower priority
clients' complex business problems. And while our name has changed, The presumption of validity is an evidentiary for defendants. If the Supreme Court signals
our level of commitment and dedication remains the same, delivering the high level of burden premised on the assumption that the that the indeiniteness standards should be
service in tax, assurance, and consulting our clients have relied on for generations.
Patent Ofice has correctly applied its exper- loosened, defendants will likely push these
tise in allowing valid patents. In Nautilus’ view, issues more strenuously without fear that

Connect with us: bakertilly.com
however, this evidentiary burden should not the courts will simply rescue vague patents.
impact the legal question of whether a patent Patentees should hedge the issue by
complies with the statutory requirements of including some more precisely drafted claims
particular and distinct claiming. Courts must in their patent applications. Importantly, how-
construe claims to provide a deinition as a ever, patentees must ensure that their patent
matter of law. In making that determination, speciication is detailed enough to support
© 2013 Baker Tilly Virchow Krause, LLP.
courts should not be encouraged to permit these more precisely drafted claims. Never-
Baker Tilly refers to Baker Tilly Virchow Krause, LLP, an independently legally ambiguous claims merely to preserve theless, patentees should still draft other
owned and managed member of Baker Tilly International.
their validity.
claims that provide more lexibility. With a

While all admit that the ultimate determi- mix of claims, patentees can be assured to
nation of indeiniteness is a question of law, have at least some deinite claims no matter
Biosig responds that one has to evaluate sub- what the law is after Nautilus. Finally, should
stantial underlying factual questions to deter- the Supreme Court signiicantly lower the
1
INFORMATION
mine indeiniteness. Speciically, the deter- burden to show indeiniteness, patentees
Job Number Client 208-12584 Baker Tilly
Trim 4.75” x 5.5” Bleed
Modification Date Output Date July 3, 2013 9:28 AM 07/09/13
mination is based on how a person skilled should evaluate their existing patent portfolio
Description Live
Page #
1
in the art at the time of the invention would to consider whether any patents should be
File Name
208-12584 Revolves NYLJ [4.75x5.5] bw_v1
interpret the claim in view of the knowledge submitted to the PTO for reexamination or

SIGN-OFF
Notes
in the art at that time. Thus, in Biosig’s view, reissue to draft more precise claims.
[ ]
CD Chris Preston
Pub: New York Law Journal these underlying factual issues warrant the •••
[ ]
AD Bud Snead
B/W print ad
presumption of validity.
••••••••••••••••••••••••••
[ ]
[ ]
CW Charlie Tournat
AS Stacy Hintermeister Turning to what the Supreme Court is likely 1. Case No. 13-369.
[ ]
AM Liz Prouty
to do, neither the Federal Circuit’s insoluble 2. Biosig Instruments v. Nautilus, 715 F.3d 891 (Fed. Cir.
[ ]
PM Beth Elmore ambiguity test nor the petitioner’s two reason- 2013).
[ ]
PA Mike Fritz
able construction test appears viable. But the 3. 35 U.S.C. §112(b).
4. Biosig, 715 F.3d at 901-02.
Supreme Court has typically been reluctant 5. Enzo Biochem v. Applera, 605 F.3d 1347, 1348 (Fed.
to formulate interpretive tests in patent law. Cir. 2010) (Plager, J., dissenting from denial of petition for
rehearing on indeiniteness).
Instead, the court will likely issue a “guide- 6. Citing Biosig, 715 F.3d at 898.
7. McClain v. Ortmayer, 141 U.S. 419, 425 (1891).
post” opinion that relies on the statutory lan- 8. Bilski v. Kappos, 130 S. Ct. 3218 (2010); Mayo v. Pro-
guage, past precedent, and broad principles
metheus, 132 S. Ct. 1289 (2012).

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