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

AuthorBruce M. Wexler - James T. Evans - Scott F. Peachman - Yousef M. Mian
PositionBruce 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 James T. Evans, Scott F. Peachman, and Yousef M. Mian are associates in the firm's life sciences patent litigation practice.
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
information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association.
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 JamesT. Evans, ScottF. Peachman, and YousefM. Mian are associates in the
rm’s life sciences patent litigation practice.

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