Multiple Claim Constructions and Infringement Uncertainty Prove Insufficient to Establish Indefiniteness

In Nevro Corp. v. Boston Scientific Corp., the Federal Circuit vacated the district court’s determination that various claims were invalid as indefinite under 35 U.S.C. § 112.

At the district court, defendant argued that certain claims were invalid under § 112 because infringement could only be determined after using the alleged infringing device or method. Defendant further argued that the specification failed to explain how to achieve the claimed therapeutic result with reasonable certainty and that the claims were susceptible to different interpretations.

On appeal, the Federal Circuit determined that the district court failed to apply the correct test for indefiniteness and held that the appealed claims were not indefinite under § 112.  Applying Nautilus, the Court found that the specification was sufficient to inform a skilled artisan, with reasonable certainty, as to the scope of each of the contested claim terms. Defendant’s argument that a potential infringer might be unable to determine whether a particular device or act constituted infringement until after using the device or performing the act, was irrelevant to the indefiniteness analysis.  As to Defendant’s argument that certain claim terms were indefinite because they were susceptible to different constructions, the Court affirmed that a claim does not fail for indefiniteness solely because it is susceptible to different constructions.