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 of RatnerPrestia. 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.
Mr. Sikand has authored several articles in IP Law360 and Intellectual Property Today magazine in 2014 and 2015, and wrote a guest column titled Navigating Terms of Degree Post-Nautilus. He was previously quoted in the October 27, 2014 edition of IP Law360 in an article titled Federal Circuit May Fill in Blanks on New Indefiniteness Rule.
RatnerPrestia’s practice is devoted exclusively to intellectual property (IP) law. With extensive and diverse legal, technical and corporate expertise, its professionals provide practical, cost-effective, business-oriented counseling to a wide range of international and domestic businesses. It represents clients in court proceedings and before the U.S. Patent and Trademark Office. Through its extensive network of foreign associates, it also represents clients before courts and administrative bodies around the world. RatnerPrestia is a full-service IP firm with a 30 year proven track record of success. For additional information, visit www.RatnerPrestia.com.