Dina Hayes Offers Insights on Patent Indefiniteness in InsideCounsel

InsideCounsel reports on the Supreme Court’s recent decision in Nautilus v. Biosig, a case that it described as one anticipated to be “a mover for a few industries, particularly software." The high court’s tightening of the standard is also expected to have a significant general impact in all future patent cases.

According to Kaye Scholer Intellectual Property Counsel Dina Hayes, “It will be most successful in challenges to patents that are being enforced a number of years past their issuance. At a time when technology changes so rapidly, the vulnerable patents are those where the intrinsic record as viewed by one of ordinary skill in the art cannot (with reasonable certainty) be understood to cover the newer technologies.”

Hayes noted that the Supreme Court’s decision was not, in substance, a drastic departure from the preceding body of law governing indefiniteness, but added, “The Court has certainly tightened up the definiteness test by going back to the language of the statute itself.  The Court’s decision may result in indefiniteness challenges from accused infringers that would not have challenged patents under the “insolubly ambiguous” test, which had been used by the Federal Circuit as a shorthand for an indefiniteness analysis.”

As for whether the efforts of patent trolls could possibly be tempered here, Hayes noted that, while the ruling does not affect patent trolls directly, any tightening of the patent laws will.

She concluded, “The decision does, however, demonstrate an attempt to reign in the patent law requirements back to the language of the statutory provisions, which may be a common thread between the newly issued (Limelight) and pending (CLS v. Alice) cases before the Supreme Court.”