Category Archives: § 112

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Delaware Judges Are Finding Patent Claims Indefinite Post-Nautilus

It has been a little more than a year since the Supreme Court rendered its decision in Nautilus, lowering the standard for finding patent claim terms indefinite. Many commentators at that time predicted the decision would have broad implications for all patent cases where definiteness is at issue. Two recent cases from the District of Delaware demonstrate the … Continue reading this entry

The Supreme Court Defines New Indefiniteness Standard

Today the Supreme Court issued an opinion in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, which was previously discussed here. The unanimous court, in an opinion by Justice Ginsburg that looked to the language of the statute and Supreme Court precedent articulated the following standard: [A] patent is invalid for indefiniteness if its claims, read … Continue reading this entry

Supreme Court Takes on the Federal Circuit's "Extravagant" Indefiniteness Standard

Yesterday, the Supreme Court heard oral argument in Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369. Biosig sued Nautilus in 2004 over a patent covering heart rate monitor technology associated with exercise equipment. The district court invalidated the claims for being indefinite, however the Federal Circuit reversed concluding that the claims would have been understood … Continue reading this entry

PTAB Terminates IPR Sua Sponte Where Claims Are Indefinite

As dictated by 35 U.S.C. § 311, a petitioner can pursue inter partes review (“IPR”) before the Patent Trial and Appeal Board (“PTAB” or “Board”) based on certain grounds of anticipation or obviousness under 35 U.S.C. §§ 102 or 103, respectively. This prior-art based inquiry generally involves an evaluation of patents or printed publications that the petitioner relies on … Continue reading this entry

Federal Circuit Upholds Invalidity Under 35 U.S.C. § 112 ¶ 2.

The Federal Circuit’s recent decision in Juxtacomm-Texas Software, LLC v. Tibco Software, Inc., Nos. 2013-1004, -1025 (Sept. 30, 2013) (nonprecedential) serves as a reminder of the vulnerability of patent claims that drift beyond the scope of what an applicant regarded as its invention: The decisions of the district court … construing the relevant claim language of U.S. Patent No. … Continue reading this entry