Kyle Musgrove in Law360: High Court Indefiniteness Test Will Spur Rush To Nix Patents


The U.S. Supreme Court's Monday decision relaxing the test for proving that a patent is indefinite will prompt accused infringers to file a flood of motions challenging patents under the new standard, but it may not result in substantially more patents being invalidated, attorneys say.

The justices threw out the Federal Circuit's long-standing test that a patent is not indefinite unless it is "insolubly ambiguous," ruling that it allowed for too much imprecision in patent claims. Instead, the high court ruled that a patent must inform a person skilled in the art about the scope of the invention "with reasonable certainty..."

It's difficult to tell how the new standard will be applied in practice, according to Kyle Musgrove of Haynes and Boone, LLP.

"I wouldn't call this a bright-line test," he said. "It will be a case-by-case determination that leaves room for district courts and the Federal Circuit to work out the standard."

Excerpted from Law360, June 3, 2014. To view full article, click here (subscription required).

Email Disclaimer