Sunjeev Sikand Speaks with IP Law360 on the Federal Circuit’s Nautilus Remand Ruling

Washington, D.C. | May 2015 – Sunjeev Sikand was featured in the April 27, 2015 edition of IP Law360 regarding the Federal Circuit’s Nautilus v. Biosig remand decision on definiteness. In an appeal by Nautilus, the Supreme Court last year threw out the Federal Circuit’s rule that patents are only indefinite if they are “insolubly ambiguous,” and instead held that they are indefinite if they fail to inform a person skilled in the art about the scope of the invention “with reasonable certainty.”

In the article titled Federal Circuit Remand Shows Nautilus May Have Little Impact, Mr. Sikand observes that there is little real distinction between the two tests, as the Federal Circuit had generally applied the old test in a way that looked at how a person skilled in the art would interpret the claims, which is what the Supreme Court said is most important:

“Insolubly ambiguous sounded a bit extreme, but in practice it was applied in a way that was consistent with Supreme Court precedent predating Nautilus,” said Sunjeev Sikand. Monday’s ruling makes clear that even with the new standard, “there’s not going to be as much difference as people originally believed.”

Sikand noted the Federal Circuit’s ruling was based in part in expert testimony by the inventor of Biosig’s patent arguing that a person skilled in the art would know what the phrase “spaced relationship” would mean in the context of the type of electrodes at issue.

“The key takeaway is that if you have expert testimony to rely on, that can save your patent,” he said.