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MBHB Attorneys Draft Amicus Brief Filed in the U.S. Supreme Court Urging for a Change in the Standard for Patent Claim Definiteness

McDonnell Boehnen Hulbert & Berghoff LLP attorneys Paul Berghoff and Jordan Pringle drafted an amicus brief on behalf of the Intellectual Property Owners Association (“IPO”), filed March 3, 2014 in the U.S. Supreme Court. The brief urges the Supreme Court to discard the Federal Circuit’s current “insolubly ambiguous” standard for determining whether a patent claim is indefinite. The brief argues for a “reasonable clarity” standard that would require the claims to be reasonably understandable to a person having ordinary skill in the art in light of the specification and prosecution history. The new standard would limit patentable claims to those giving the public reasonable notice of the scope of the protected subject matter. In addition, the brief argues that the statutory presumption of validity set forth in 35 U.S.C. § 282 applies to all grounds of alleged invalidity, including indefiniteness and other validity challenges based on alleged failure to comply with 35 U.S.C. § 112. The case is Nautilus, Inc. v. Biosig Instruments, Inc. View the amicus brief at http://www.ipo.org/wp-content/uploads/2014/03/IPO_NautilusBrief_Filed.pdf.