More than a year has passed since the U.S. Supreme Court's Nautilus decision, which changed the indefiniteness standard. In its remand decision in Nautilus, the Federal Circuit was coy about whether the change in the standard was substantial, stating opaquely that the Supreme Court had "modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of 'reasonable certainty,' rather than the unreliable compass of 'insoluble ambiguity.'" It has been reported that at a "PTO Day" this spring, Judge Raymond T. Chen (the author of a number of post-Nautilus decisions) implied the change was not substantial, stating that too much had been made of a "rhetorical flourish" in the case first identifying the "insolubly ambiguous" standard. A few months later, in Dow Chemical, the Federal Circuit was crystal clear: "there can be no serious question that Nautilus changed the law of indefiniteness."
Whether the change is substantial or not, since Nautilus issued the Federal Circuit has revisited a few of its earlier cases and decided new cases under the new indefiniteness rubric. The court has now had the opportunity to consider indefiniteness challenges in circumstances that routinely arise in patent claims. In this article, Finnegan attorney Doris Johnson Hines considers the court's analyses in two areas: terms of degree/subjective terms and terms requiring measuring or testing.
Originally published by Law360.
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