An amicus brief filed this month by Cam Barker and Chris Johnson of Yetter Coleman on behalf of the American Intellectual Property Law Association, argued to the U.S. Supreme Court in Nautilus, Inc. v. Biosig Instruments, Inc., that the Federal Circuit has confused patent law with its shorthand phrases of “not capable of construction” and “insolubly ambiguous” to describe a failure to comply with the requirement of 35 U.S.C. 112(b) that patent applicants particularly point out and distinctly claim what is regarded as the invention.
The brief points out that Federal Circuit decisions on the definiteness requirement in most instances correctly state that a patent claim satisfies this requirement if its meaning is clear to a person of skill in the art, in light of the patent specification and prosecution history. However, the brief argues that the court of appeals’ shorthand for that requirement may cause tribunals and litigants to erroneously focus on the mere ability to adopt a definition, rather than the clarity of the patent claim itself. The brief then identifies the function-based language of the patent claims at issue, explains vices posed by functional claiming, and argues that proper enforcement of the definiteness requirement can prevent those ill effects.The Supreme Court is expected to decide the case in June 2014.