Jason Whitney in Intellectual Property & Technology Law Journal: Section 112 Indefiniteness is Still a ‘Lofty’ Invalidity Attack

02/05/2020

After the U.S. Supreme Court tightened the requirements of 35 U.S.C. § 112 in Nautilus, Inc. v. Biosig Instruments, Inc., by holding that claims must describe “the scope of the invention with reasonable certainty,” some envisioned the possibility of a reinvigorated indefiniteness standard standing as a bulwark against overly broad or vaguely drafted patent claims. Indeed, just months after Nautilus, the U.S. Court of Appeals for the Federal Circuit hinted at such a future with Interval Licensing LLC v. AOL, Inc., which established the rule that terms of degree “must provide objective boundaries” for claimed inventions.

But as the Federal Circuit has continued to define the contours of Nautilus over the following years, indefiniteness attacks have met uneven success and produced inconsistent application of Section 112. The Federal Circuit’s recent opinion in Guangdong Alison Hi-Tech Co. v. ITC, 3 which examined the term of degree “lofty,” represents one such case. Although Alison found that “lofty” satisfied Section 112, the decision illustrates the current paradigm for indefiniteness attacks: unpredictability with a gradual shift in the “delicate balance” back towards tolerating more uncertainty in patent claim.

Excerpted from Intellectual Property & Technology Law Journal. To read the full article, click on the PDF below.

Whitney-Section-112-Indefiniteness.PDF

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