UNDERSTANDING NAUTILUS' REASONABLE-CERTAINTY STANDARD: REQUIREMENTS FOR LINGUISTIC AND PHYSICAL DEFINITENESS OF PATENT CLAIMS.

• Author: Fox, Gary M.
• Position: NOTE

Patent applicants must satisfy a variety of requirements to obtain a patent from the U.S. Patent and Trademark Office (USPTO). The definiteness requirement forces applicants to describe their inventions in unambiguous terms so that other inventors will understand the scope of granted patent rights. Although the statutory provision for the definiteness requirement has been stable for many years, the Supreme Court's decision in Nautilus v. Biosig Instruments altered the doctrine. The Court abrogated the Federal Circuit's insoluble-ambiguity standard and replaced it with a new reasonable-certainty standard. Various district courts have applied the new standard in different ways, indicating the need for further clarification. This Note argues that, following the establishment of the reasonable-certainty standard, courts may understand the definiteness requirement under a two-part framework of linguistic and physical definiteness, which are both required for claims to be definite. A claim fails the linguistic-definiteness requirement if it is open to multiple constructions and one construction is not clearly correct. Additionally, a claim fails the physical-definiteness requirement if it uses comparative terms or involves ambiguous spatial relationships not limited to a narrow range.

TABLE OF CONTENTS INTRODUCTION I. DEVELOPMENT OF THE DEFINITENESS REQUIREMENT A. Statutory Grounding and Purpose B. Standards Before and After Nautilus II. UNCERTAINTY REGARDING THE DEFINITENESS REQUIREMENT A. A New Standard B. The District Courts' Applications C. The Federal Circuit's Response III. Two Requirements for Definiteness A. Linguistic Definiteness B. Physical Definiteness CONCLUSION INTRODUCTION

Imagine that you are trying to follow a recipe. The recipe directs you to separate three eggs. It tells you to "place one half of the separated eggs into a bowl" and "discard the remaining half." After adding the other ingredients and transferring everything to a pan, the recipe instructs you to "place the pan some distance away from the center of the oven" for proper cooking. This recipe requires you to fill in some gaps. First, it requires you to decide whether to use the yolks and discard the whites or to use the whites and discard the yolks. Then, when the time comes to put the pan in the oven, you must judge how far from the center is an appropriate distance. You could place the pan only a couple of inches from the center, or you could place it very near the edge of the oven rack. Perhaps your experience with other recipes will provide you with clues for solving these problems. But, on its face, the recipe is ambiguous, and you might reject it as unhelpful.

A patent applicant must avoid some of the same problems with ambiguity as the author of this recipe. To obtain patent protection, an inventor must first submit an application to the U.S. Patent and Trademark Office ("USPTO"). (1) The application must conform to the provisions in the Patent Act (2): It must include both a description of the invention (3) and claims spelling out the inventor's rights. (4) The application must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor ... regards as the invention." (5) This definiteness requirement forces inventors to delineate the metes and bounds of patent claims so that the public has sufficient notice as to which parts of the field remain open to future inventors. (6) If the applicant fails to specify sufficiently definite claims, then the USPTO will refuse to grant the patent, leaving the inventor without any protection for the ideas contained in the application.

Recently, the Supreme Court has shown a remarkable interest in patent law. (7) From 1982 through 2000, the Court heard only eight patent cases. (8) But since 2000, it has heard more than two dozen patent cases. (9) Plus, the Court has started hearing types of patent cases that it has not heard in a long time. For example, the Court's recent decision in Samsung Electronics Co. v. Apple Inc. (10) was the first time in more than 100 years that the Court granted certiorari for a design-patent case. (11) Commentators have speculated about the driving force behind the Court's renewed interest in patent law. (12) Regardless of the underlying reasons, in 2014, the Court's interest led it to recalibrate the definiteness requirement in Nautilus, Inc. v. Biosig Instruments, Inc. (Nautilus II). (13)

The implications of the Supreme Court's decision in Nautilus II are still not completely clear. On a fundamental level, the Court rejected the Federal Circuit's "insoluble ambiguity" standard for definiteness, holding that it is not enough for a court to be able to give a claim any meaning. (14) Instead, the Court held that a person having ordinary skill in the art ("PHOSITA") must understand the invention's scope "with reasonable certainty." (15) But the legal system is still working out how to apply the Court's holding. Some commentators have stated that the new standard is just the old standard in a different form. (16) District courts have applied the new standard in different ways. (17) And despite its patent expertise, even the Federal Circuit conceded that it did not completely understand how to move forward under the new standard. (18) Courts, parties involved in patent litigation, and inventors would benefit from a more detailed framework for the definiteness requirement.

This Note argues that courts might understand the Supreme Court's reasonable-certainty standard for the definiteness requirement under a framework with two necessary elements: linguistic definiteness and physical definiteness. Part I reviews the definiteness requirement by discussing its purpose, statutory grounding, and judicial standards before and after Nautilus. Part II examines how lower courts have applied the definiteness requirement in different ways since the Supreme Court's decision in Nautilus II. Part III suggests that courts analyzing definiteness under the reasonable-certainty standard might apply a two-part framework based on linguistic definiteness and physical definiteness.

1. DEVELOPMENT OF THE DEFINITENESS REQUIREMENT

   Although patent law's definiteness requirement has existed for many years, the Supreme Court's recent articulation of a new standard altered the doctrine. This Part reviews the development of the definiteness requirement in its statutory and judicial contexts. Section I.A examines the textual basis for and goals of the definiteness requirement. Section I.B explains how the Supreme Court's decision in Nautilus II shifted the standard for definiteness in the lower courts.

   1. Statutory Grounding and Purpose

      The Patent Act outlines the requirements that patent applications must meet for USPTO approval. It includes four disclosure requirements whose names track their textual hooks: the enablement, written-description, bestmode, and definiteness requirements. (19) To fulfill the definiteness requirement, an application must "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor ... regards as the invention." (20)

      From its inception, the U.S. patent law system has included a definiteness requirement in some form. (21) Historically, the Court's articulation of the definiteness requirement emphasized providing "the public" with sufficient notice of precisely what the applicant had patented. (22) The modern articulation of this requirement survives in the Patent Act at 35 U.S.C. [section] 112(b). (23) From the early days of the U.S. patent system until now, the definiteness requirement has functioned to alert the public, in unambiguous terms, of the patentee's rights.

      One can think about patent claim terms as functioning similarly to fences. Just as fences indicate physical boundaries in the realm of real property, claim terms demarcate the conceptual boundaries of a patented invention. (24) The definiteness requirement ensures that patent applicants clearly describe the metes and bounds of their claims. (25) What is not claimed is just as important as what is claimed because other inventors will want to know which areas of technology are still available to them for patenting. (26) Put another way, other inventors will want to know whether there is still space in the field for them to invent without infringing on the patentee's rights. (27)

   2. Standards Before and After Nautilus

      Although the statutory provision for definiteness has been stable for many years, the Supreme Court's interest in the doctrine and recent articulation of the judicial standard have brought about changes in the law. The Court's changes have had a significant impact on the lower courts.

      Before Nautilus II, district courts followed the Federal Circuit's insoluble-ambiguity standard as articulated in Datamize, LLC v. Plumtree Software, Inc. (28) The Datamize court considered whether a claim using the term "aesthetically pleasing" in a software patent was sufficiently definite. (29) Ultimately, the court held that the claim was indefinite because there was no "objective way to determine whether the look and feel of an interface screen is 'aesthetically pleasing.'" (30) The Datamize court stated that "[o]nly claims 'not amenable to construction' or 'insolubly ambiguous' are indefinite." (31) In other words, the court found that claims are definite as long as they "can be given any reasonable meaning." (32) The court further noted that "[t]he definiteness requirement ... does not compel absolute clarity." (33)

      Generally, claim terms have easily surpassed this low bar. A recent, empirical study of disclosure requirement cases during the pre-Nautilus era demonstrates this trend. (34) Professors John R. Allison and Lisa Larrimore Ouellette found that, before 2014, courts rejected the majority of definiteness challenges as a matter of law. (35) In fact, courts invalidated...