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the court tried to evaluate the deiniteness mention the patentee and its competitors,

of the “spaced relationship” limitation, the know what the patent actually claims.”5
court concluded that the arguments made Nautilus continues that patentees, with
by Biosig to the Patent Ofice were internally little risk of a court inding patents indeinite,
inconsistent and “gibberish.” Because the are encouraged to claim vaguely because it
court could not discern any parameters for signiicantly increases the burden on a com-
what the “spaced relationship” should be, it petitor of interpreting and defending against
found the claim indeinite.
an infringement claim. Moreover, vagueness
Biosig appealed to the Federal Circuit, provides opportunities for a patentee to adapt
which reversed the district court and held the scope of its claim during litigation to read

that the term “spaced relationship” was not on a particular product or avoid prior art.
indeinite.2 Applying its “insolubly ambiguous” Thus, Nautilus asserts that the insolubly
standard for indeiniteness, the Federal Cir- ambiguous standard violates the statutory
cuit found that the claim provided “inherent requirement of particular and distinct claim-
parameters” and functional requirements that ing and frustrates the public notice function
deined the scope of the claim. The Federal of patent claims. In the view of Nautilus and
Circuit also relied on the inventor’s declara- its amici, inventors are in the best position
tion, which stated that a person of skill in to avoid this socially undesirable outcome

Knowledge of business, inance and accounting are needed at many stages of the
the art could perform conventional testing to
litigation process. That’s why your accountant should be an integral part of your liti-
determine the spacing needed to satisfy the
functional requirements. The concurrence,
gation team. Our Law Firm Services, Business Valuation and Litigation Support Group
however, found that the term “space relation- Nautilus asks the Supreme
can assist you in understanding a case’s complex inancial aspects and provide expert
ship” was deinite on its own, without the
witness testimony on a variety of issues. Isn’t it time you made Israeloff, Trattner &
functional limitation.
Court to require more preci-
Co. part of your team?
The Supreme Court granted certiorari
on the following questions: (1) Whether the sion from patentees and make
buSineSS, PROFeSSiOnAL PRACTiCe & LiCenSe vALuATiOnS
Federal Circuit’s acceptance of ambiguous it easier for defendants to
mARiTAL diSPuTeS/enHAnCed eARninGS CAPACiTY
FORenSiC ACCOunTinG/eXPeRT TeSTimOnY • embezzLemenT & FRAud AudiTS
patent claims with multiple reasonable inter- prove indeiniteness.
pretations—so long as the ambiguity is not
buSineSS LOSS/dAmAGe AnALYSiS
“insoluble” by a court—defeats the statutory
bAnKRuPTCY & ReORGAnizATiOn
requirement of particular and distinct patent
claiming; and (2) whether the presumption of because they know best what they actually
validity dilutes the requirement of particular invented. The law should therefore incentivize
Ofices in New York City and Garden City
and distinct patent claiming.
inventors to be crystal clear in their claiming,
1-8OO-945-O2OO
and the Federal Circuit’s high bar for indei-
niteness should be rejected.
Visit us on the web at www.israeloff.com
Supreme Court Review
Perhaps surprisingly, Biosig and its amici
On appeal, Nautilus argues that the insol- do not make much effort to defend the “insolu- IT13_NYLJ_LitSupWeights_4.75x5.5_final.indd 1
5/24/13 1:27 PM
ubly ambiguous standard is an unjustiied bly ambiguous” standard. Instead, Biosig, the
departure from the statutory standard for government, and some other amici argue that
claim precision, which requires that claims “insolubly ambiguous” is not really the test
“particularly point[ ] out and distinctly the Federal Circuit applies when determining
claim[ ] the subject matter which the inven- indeiniteness. Rather, “insolubly ambiguous”
tor . regards as the invention.”3
is just shorthand for the actual test which

According to Nautilus, the Federal Cir- inds a claim indeinite when “reasonable
cuit’s test permits too much uncertainty and efforts at claim construction result in a dei-
encourages courts to rescue vague patents by nition that does not provide suficient par-
picking a construction even when the decision ticularity and clarity to inform skilled artisans
is arbitrary and unpredictable. For example, of the bounds of the claim.”6
under Federal Circuit case law, a patent is The American Intellectual Property Law
suficiently deinite “[i]f the meaning of the Association (AIPLA), writing as amici, concurs
claim is discernable, even though the task that the Federal Circuit’s “insolubly ambigu-
may be formidable and the conclusion may ous” standard is merely a shorthand phrase

be one over which reasonable persons will for the actual analysis applied. But the AIPLA
disagree.”4
goes further than Biosig and acknowledges
Nautilus contends that its case epitomizes that the use of the shorthand language has a www.marcumllp.com
the problem with the Federal Circuit’s test. tendency to mislead and should be rejected
The jurists reviewing Biosig’s patent offered for that reason.
at least four different constructions of the While the “insolubly ambiguous” standard,
claim at issue. The district judge construed be it in fact or in name, has few defending
the claim and then later reversed himself it, Nautilus’ proposed alternative test for
providing a second construction. The Fed- indeiniteness also faces strong opposition. Marcum LLp, one of the largest business
valuation practices outside the “Big 4”,
eral Circuit majority offered a third construc- Nautilus asserts that a patent claim is indef- has the expertise, experience and
tion, and the concurring Federal Circuit judge inite if it is “susceptible to more than one resources to provide the litigation,
offered a fourth. To Nautilus, the fact that the reasonable interpretation.” This test follows
Federal Circuit found this patent suficiently directly from Nautilus’ arguments about the valuation and investigative services
clear despite the disparity of views by the important notice function of patents. After you deserve.
judges whose job it was to construe the pat- all, if there are two reasonable constructions,
ent is proof positive that the Federal Circuit’s how will the public know which interpreta-
test is too lenient. Nautilus quotes Federal tion is correct?

Circuit Judge S. Jay Plager’s comment from As Biosig and other amici point out, how-
an earlier indeiniteness case to emphasize ever, Nautilus’ test goes too far. If a patent Discover the Diference
the extent of ambiguity currently permitted: claim could be invalidated by reasonable
“It is not until three court of appeals judges disagreement over the claim’s meaning, then ASSURANCE I TAX I ADVISORY
randomly selected for that purpose pick the very few valid patents would exist. Nearly International Member of Leading Edge Alliance
‘right’ interpretation that the public, not to
every patent case has some » Page S11