When the Supreme Court speaks on patent law, litigants with cases pending in the lower courts often rush to introduce additional arguments and evidence based on the perceived change in law. In one recent order from Maine, U.S. Magistrate Judge John H. Rich III ruled that the defendant could not submit an additional expert report based on the Supreme Court’s June 2, 2014 opinion in Nautilus, Inc. v. BioSig Instruments, Inc. That opinion set forth a new wording of the standard for determining indefiniteness of patent claims.
In Nautilus, the Supreme Court held that “[a] patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” In view of the Nautilus decision, defendant Microsoft filed an emergency motion to amend the expert discovery schedule to allow it to serve an additional expert report on the issue of indefiniteness. Microsoft argued that the test set forth in Nautilus involves factual inquiries, and a supplemental expert report is necessary to address these inquiries.
The Maine district court disagreed. First, the court explained that the disruption caused if Microsoft were allowed to submit an indefiniteness report is outweighed by the importance of maintaining the current case schedule. And moreover, the court found that Nautilus did not involve factual inquires that necessitated a supplemental expert report, because, according to the court, “the Nautilus decision principally addresses legal issues regarding patent law rather than hybrid legal and factual issues . . .”