Supreme Court’s New Indefiniteness Test Requires Supplemental Post-Hearing Briefing

The ALJ sua sponte extended the target date and ordered the parties to provide supplemental briefing due to a Supreme Court decision on invalidity filed after post-hearing briefing concluded. "[T]he United States Supreme Court issued its decision in Nautilus, Inc. v. Biosig Instruments (June 2, 2014). The Court held that the standard for determining indefiniteness as articulated by the Court of Appeals for the Federal Circuit under 35 U.S.C. § 112 ¶ 2 ('amenable to construction' or 'insolubly ambiguous') is improper and that the standard should be whether 'a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.' None of the parties in this Investigation addressed this issue using the standard articulated by the Supreme Court in their presentation of evidence or in their briefs."

Integrated Circuit Devices and Products Containing the Same, 337-TA-873 (ITC June 3, 2014, Order) (Gildea, ALJ)