Patent Indefiniteness and Ambiguity Changes

In his Patently-O post titled “Supreme Court: To Be Valid,Patent Claims Must Provide Reasonable Certainty Regarding the Claim Scope,” Dennis Crouch discusses the indefiniteness of patents, or requirements regarding what a patent infringement would entail. He states that a patent claim that fails the indefiniteness test would be unpatentable, invalid, and unenforceable.

While most patent claims have some ambiguity, Crouch questions: how much ambiguity is too much? In the past, the Federal Circuit had implemented a rigid indefiniteness test, making it difficult to find a claim invalid due to it being indefinite. Recently, however, the Supreme Court found that “insolubly ambiguous” claims fail to apply, and would therefore count as indefinite.

As a result, the Supreme Court has created a new test for patents’ indefiniteness, as follows: “A patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art [at the time the patent was filed] about the scope of the invention…”

I think that it is particularly interesting that the Supreme Court chose to relate patent indefiniteness to the knowledge of one skilled in the art. By implementing this definition, they constrained the scope of patent claims to mitigate any intentionally confusing or vague claim language.

The Supreme Court cited its justification for this new definition of indefiniteness to be the old rule’s incentivization of patentees to intentionally “inject ambiguity into their claims.” We had discussed this tactic in class, and I believe that, while allowing patents to cover more scope and increase their monetization potential, this tactic allowed patent trolls to easily create suits without basis.

I further discuss my thoughts on this topic at the following link:
https://www.youtube.com/watch?v=aKNGwHNeBSE