Pre-Nautilus Adjudication of Definiteness Does Not Bar Indefiniteness Counterclaim

The court denied plaintiff's motion to dismiss defendant's invalidity counterclaim for issue preclusion because of the Supreme Court's recent decision in Nautilus. "[Defendant] contends that an exception to issue preclusion applies because after the court determined that the claim term was not indefinite, the Supreme Court changed the legal standard for indefiniteness when it issued its decision in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014). The Court agrees. . . . Because the Supreme Court’s decision in Nautilus changed the indefiniteness standard that the court applied in its orders in the prior case, there has been an 'intervening change in the governing law.' Further, indefiniteness is question of law. Thus, the doctrine of issue preclusion does not prevent [defendant] from litigating the definiteness of the [patent-in-suit's] claim terms."

Presidio Components, Inc. v. American Technical Ceramics Corp., 3-14-cv-02061 (CASD February 12, 2015, Order) (Huff, J.)