After Nautilus: The Tension Between the Inherent Lack of Clarity of Language and Notice Function of Patent Law

• Author: Bruce M. Wexler - James T. Evans - Scott F. Peachman - Yousef M. Mian
• Position: Bruce M. Wexler is the chair of the life sciences industry practice group and a litigation partner in the New York office of Paul Hastings. He can be reached at brucewexler@paulhastings.com. James T. Evans, Scott F. Peachman, and Yousef M. Mian are associates in the firm's life sciences patent litigation practice.
• Pages: 60-64

Published in Landslide® magazine, Volume 9, Number 4 , a publication of the ABA Section of Intellectual Property Law (ABA-IPL), ©2017 by the American Bar Association. Reproduced with permission. All rights reserved. This

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Aer

Nautilus

By BruceM. Wexler, JamesT. Evans,

ScottF. Peachman, and YousefM. Mian

Inherent Lack of

Clarity of Language

and Notice Function of

Patent Law

The Tension between the

Patent law demands that an invention be new and nonob-

vious to merit the award of temporary exclusivity. But

even a patent for a new and nonobvious invention can

be invalid if the patentee fails to describe and claim the inven-

tion following technical requirements of the patent law. This

requirement can be rife with pitfalls, given the inherent ambi-

guity of language. A recent Supreme Court case, Nautilus, Inc.

v. Biosig Instruments, Inc.,1 has increased exposure of paten-

tees to attacks on their choice of language in their patents, and

makes patentees further think carefully about how they phrase

their claimed invention. This article explains Nautilus and the

competing policies recognized in that decision, and explores

the evolving legal and litigation landscape so that practitioners

and patentees can avoid unintended problems that might render

a patent on an otherwise meritorious invention invalid.

In patent law, the text of 35 U.S.C. §112 embodies, among

other things, three requirements for the amount of disclosure

and specicity an applicant must include in his or her patent: an

adequate description of the subject matter of the invention (writ-

ten description); a disclosure that enables one of ordinary skill in

the art to make and use the invention (enablement); and claims

that particularly point out and distinctly claim the subject matter

regarded as the invention (deniteness). Historically, enablement

was a major area of litigation.2 With the proliferation of biotech

patents, we saw an uptick in written description challenges.3 De-

niteness challenges were not very common and typically occurred

when a court was truly confounded by patent claim language.4

The Supreme Court’s 2014 Nautilus ruling, addressing the

deniteness requirement and loosening to some extent the

standards for attacking claims, has opened the door to more

aggressive challenges. No doubt the law will settle out and

clarify as these challenges continue to be resolved, but in the

meantime practitioners would be well advised to plan for them.

Nautilus and the “Inherent Limitations of Language”

At issue in Nautilus was a patent for a heart-rate monitor in

which certain electrodes were claimed as being “mounted ...

in spaced relationship with each other.”5 The U.S. Court of

Appeals for the Federal Circuit had addressed the meaning

of “spaced relationship” and found that phrase to be denite,

applying a legal test where words are denite as long as they

are not “insolubly ambiguous.”6

On further review, the Supreme Court reversed and

remanded. First, the Court recognized the delicate balance

between the inherent imprecision of language and the need

for some precision in the patent law:

BruceM. Wexler

He can be reached at brucewexler@paulhastings.com. JamesT. Evans, ScottF. Peachman, and YousefM. Mian are associates in the

rm’s life sciences patent litigation practice.