In a unanimous opinion today by the U.S. Supreme Court in Nautilus Inc. v. Biosig Instruments, Inc., Justice Ginsburg cited and quoted from Patent Claim Construction in the Federal Circuit, 2014 edition. Edward Manzo’s 1100-page book presents a comprehensive treatment of case law of the Federal Circuit on how courts should interpret the claims of the patent.The specific issue in Nautilus was what standard governs whether patent claims pass muster under 35 U.S.C. §112(b) which provides, “(b) Conclusion.— The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.” The Federal Circuit case law holds that claims are invalid when they are “insolubly ambiguous.” The Supreme Court’s decision today vacates that standard and rules that the proper standard is whether the claims, when viewed in light of the specification and history of the patent at the Patent and Trademark Office, “inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable.”
The first edition of Patent Claim Construction in the Federal Circuit was published in 2002 and Edward has co-authored it since then with leading intellectual property lawyers, many of whom are members of the Intellectual Property Law Association of Chicago (“IPLAC”) – the country’s oldest bar association devoted to intellectual property law. Edward is the editor-in-chief and a lead author of the book. He also served as President of IPLAC in 2010 and has chaired its Council of Past Presidents for the last two years. The book has been published by Thomson Reuters Westlaw since 2006. Before that, it was published by IPLAC from 2003-2006 and circulated to federal judges. The book has also been cited several times by federal district court judges in the past few years.
It is exciting to see that the Supreme Court found Edward’s book so authoritative that it would cite it in a decision as important as that of Nautilus Inc.