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  • The opinions, commentary and characterizations provided to this online forum by the authors and moderators are provided for encouraging discussion, thought and debate on important post grant issues. These postings are in no way representative of the opinions of Oblon Spivak et al., or its clients.

Archive for June 3rd, 2014

Nautilus Decision to Drive PGR and CBM Filings

Posted On: Jun. 3, 2014   By: Scott A. McKeown

nautilus-112

Decision Indirectly Highlights Value of Post-Grant Challenges

Yesterday, the Supreme Court decided that the Federal Circuit’s “insolubly ambiguous” framework for analyzing indefiniteness was, well…. indefinite.  In Nautilus Inc. v Biosig Instruments, Inc., the court found that “. . .the expressions “insolubly ambiguous” and “amenable to construction” permeate the Federal Circuit’s recent decisions concerning § 112, ¶2’s requirement.  We agree with Nautilus and its amici that such terminology can leave courts and the patent bar at sea without a reliable compass” (here). In reversing the decision of the CAFC, the case was remanded with instructions to consider a re-calibrated standard. That is, whether the claims when read in light of the specification and prosecution history fail to inform, with reasonable certainty, the scope of the claims to one of skill in the relevant art. The new test, as discussed at length in the decision, emphasizes a more fact intensive analysis.

As pointed out in footnote 10 of the decision, the parties dispute over the proper weight to be accorded the underlying proofs (i.e., clear and convincing, or not), and the degree of deference to a previous post-grant determination of the USPTO, were left for another day—That day may be just around the corner. Read the rest of this entry »