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Supreme Court’s Indefiniteness Ruling Has Immediate Impact at ITC

After a hearing in an Investigation occurred between February 24 and March 7, 2014 and with the parties having submitted their opening post-hearing briefs on March 21, 2014 and their reply post-hearing briefs on March 28, 2014, the Administrative Law Judge determined that supplemental briefing was necessary after the Supreme Court’s decision in Nautilus v. Biosig.

Noting that the final initial determination on violation in the Investigation was currently due to be issued no later than June 20, 2013, the Administrative Law Judge pointed out that “among the material issues involved in this investigation is whether certain claims of the asserted patents are indefinite under 35 U.S.0 § 112.”

The Administrative Law Judge then noted that [o]n June 2, 2014, the United States Supreme Court issued its decision in Nautilus, Inc. v. Biosig Instruments, U.S. (June 2, 2014) … [t]he 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.” (Id., Slip Op. at 11 (emphasis added).)”

Because of the timing of the decision, none of the parties in the Investigation had addressed the indefinite issue using the standard articulated by the Supreme Court in their presentation of evidence or in their briefs. Accordingly, the Administrative Law Judge concluded that supplemental briefing would be appropriate based on this substantive change in the law. “Therefore, in view of this development and its bearing on this Investigation, and in the interest of due process and fairness, the Administrative Law Judge concludes that the parties should be permitted a further period to brief the issue of indefiniteness as governed by the Supreme Court’s holding in Nautilus. The Administrative Law Judge hereby orders the parties to submit further briefs addressed to this issue by the close of business on June 17, 2014 and their respective replies by the close of business on June 24, 2014. In so doing, the parties are invited to include a statement, and reasoning in support thereof, regarding whether the record should be reopened for taking further evidence to address this substantive change of law.”

In the Matter of Certain Integrated Circuit Devices and Products Containing the Same, Inv. No. 337-TA-873 (International Trade Commission, June 3, 2014)

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