Orrick Lawyers Author Article on Potential Impact of High Court’s Ruling in Nautilus

New York Law Journal | May.05.2014

​Intellectual property partner Richard Martinelli and managing associate Nicholas Lam co-authored an article discussing the possible impact of the U.S. Supreme Court’s upcoming ruling in Nautilus v. Biosig Instruments on how precise patentees must be in defining their invention (“indefiniteness”). The article, “Will 'Nautilus' Significantly Change the Strength of Patents?”, was published by the New York Law Journal. An excerpt from the article is included below.

There is one case on the U.S. Supreme Court's patent heavy docket this term that has the potential to impact every issued patent. That case is Nautilus v. Biosig Instruments.[fn omitted] Nautilus has the potential for such broad impact because it addresses how precise patentees must be in defining their invention; in patent parlance, the issue is called indefiniteness. Two compelling and competing ideals underlie the debate.
On one side is the inventor trying to describe in words an invention that, by definition, has never existed before. This already difficult task is somewhat at odds with absolute precision because an overly precise patent might superficially restrict the scope of the inventor's patent. … Thus, skilled patent drafters typically avoid drafting claims—the portion of the patent that lays out the metes and bounds of protection—with overly precise language. This practice is largely sanctioned by the patent law, which has long recognized that unduly narrow patents do not provide adequate rights to incentivize inventors to disclose their discoveries.
On the other side is the public. A patentee receives a limited monopoly from the government that allows her to exclude all others from practicing the invention. In return, the issued patent informs the public of the inventor's technical achievements thereby promoting science and the useful arts. But there is a strong policy interest in not allowing patentees to extend their monopoly beyond what is fairly due. The claims of a patent are intended to provide notice to the public of the boundaries of the exclusionary right, much like a deed to land. Vague claims, however, create a zone of uncertainty over the boundaries of the patentee's monopoly to the detriment of the public. Thus, when "clever" patent drafters write vague and malleable patents, they frustrate the patent bargain. This problem is twofold. An ambiguous patent fails to adequately teach the inventor's new discovery to the public and it also discourages investment in competing technology due to uncertainty in the scope of the patent.