Can a Footnote Make a Difference?
At issue in Packard’s petition is whether the Supreme Court’s recent holding in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), stating that patents are indefinite if they fail to inform those skilled in the art about the scope of the invention “with reasonable certainty,” applies to patent applications. Packard argues the Supreme Court’s recent holding in Nautilus “made clear that the indefiniteness standard for issued patents—which enjoy the presumption of validity—is the same as the indefiniteness standard that applies to ‘patent applicants.’” To support this position, Packard points to footnote 10 of Nautilus, in which the Court notes the parties in Nautilus appeared to agree that the presumption of validity typically afforded to patents “does not alter the degree of clarity that § 112, ¶ 2 demands from patent applications; to the contrary it incorporates that definiteness requirement by reference.” The Supreme Court then cited to 35 U.S.C. § 282 which, in an earlier brief before the Federal Circuit, the U.S.P.T.O. pointed out applies only to issued patents litigated in civil actions. Section 282 begins with, “A patent shall be presumed valid” (emphasis added).
Packard previously asked a Federal Circuit panel to apply the now-defunct “insolubly ambiguous” standard of indefiniteness to his application. Neatly side-stepping the “insolubly ambiguous” standard, the panel declined Packard’s request, stating that Packard’s case was decided without regard to the “insolubly ambiguous” indefiniteness test “that may be appropriate for post-issuance assessment of indefiniteness;” that is, an assessment like that performed by the Nautilus Court.
In Nautilus, the U.S.P.T.O. argued that it may use a lower threshold for ambiguity when reviewing a pending claim for indefiniteness because, in a pending application, the applicant has the opportunity to amend the claims. The U.S.P.T.O. argued that this opportunity, which is not available to issued patents litigated in civil actions, justifies a lower threshold. The Supreme Court did not comment on this argument by the U.S.P.T.O. Given that the Supreme Court had the opportunity to reject the U.S.P.T.O.’s justification of a lower threshold but did not, the Court arguably declined to change the status quo.
It appears the Supreme Court’s only relevant reference to application of the indefiniteness standard to applications—by way of “applicants”—is in a footnote, which cites to a statute applicable to patents, not applications. Will the Court’s mention of “applicants” in one footnote make a difference? Packard hopes it will.
