Opinion analysis: Justices take blue pencil to Federal Circuit opinions on definiteness
on Jun 3, 2014 at 10:49 am
The surprise of the day Monday was the issuance of not one but two opinions from the April argument calendar – unanimous opinions in the two patent cases with which the Court closed the Term. Nautilus, Inc. v. Biosig Instruments will give little satisfaction to anybody except Nautilus, because we know very little more about the subject now that we’ve seen the opinion than we did before – except that the Justices do not like the way the Federal Circuit has been writing patent opinions.
The case involves the so-called “definiteness” requirement of the Patent Act – that the claims in a patent “particularly poin[t] out and distinctly clai[m] the subject matter which the applicant regards as [the] invention.” The Federal Circuit has been applying a test that requires “insoluble ambiguity,” which seems to mean that it is not possible to make any sense at all out of the claim; in practice this means that precious few patent claims are invalidated for indefiniteness. When the Court granted review, it seemed clear that the purpose of the exercise was for the Justices to determine whether they should rein in the Federal Circuit’s rule as unduly generous. We now know that they think the Federal Circuit rule is too generous, but don’t know a great deal about exactly what the Federal Circuit will do going forward.
Justice Ginsburg’s opinion for a unanimous Court was her seventh majority opinion of the year, the most on the Court. Exercising the luxury of writing an opinion for a unanimous Court, her opinion is as straightforward and direct as anything to which the Court has agreed this year. Basically, after describing the facts and the statute, the Court’s opinion makes four succinct points.
First, the question of definiteness involves a “delicate balance” of competing considerations. “On the one hand, the definiteness requirement must take into account the inherent limitations of language. Some modicum of uncertainty . . . is the price of ensuring the appropriate incentives for innovation.” On the other hand, “a patent must be precise enough to afford clear notice of what is claimed,” lest there be “a zone of uncertainty which enterprise and experimentation may enter only [at their peril].”
Second, the Court articulates what it plainly intends to be the operable test going forward: “[W]e read [the Patent Act] to require that 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.” This is not particularly illuminating for several reasons. For one thing, all agree that the test turns on what “those skilled in the art” can glean from the application. For another, what people don’t agree about – what the parties debated in their briefs before the Court – is how to decide if a description is reasonably certain if it can be read in more than one way (as so many complicated passages of English can). At least at first read, this test seems to say nothing at all about that problem.
Third, the Court calls out for particular criticism two particular phrases that “permeate the Federal Circuit’s recent decisions [about definiteness].” The first is the concept of insoluble ambiguity discussed above. The second is the idea that a claim is adequately definite if it is “amenable to construction,” which has suggested in practice that the court must work quite hard to find any plausible interpretation before concluding that a patent cannot be read as definite. The Court acknowledged that recent Federal Circuit opinions, in addition to those suspect phrases, also contain language quite similar to the test that the Court articulated in Nautilus, and admitted that its role was not to “micromanage the Federal Circuit’s particular word choice.” But, pointing to “lower court confusion” that it attributed to those particular phrases, the Court concluded, somewhat delphically, “that such terminology can leave courts and the patent bar at sea without a reliable compass.”
Fourth, and finally, the Court did not even undertake to demonstrate its new standard by application to the facts before the Court; rather, “mindful that we are a court of review, not of first view,” the Court “decline[d] to apply the standard we have announced to the controversy” before it.
As I suggested at the beginning of this post, I rather doubt that many members of the patent bar will find much of clarification in the Court’s opinion. I expect that most will agree that the Court is trying to nudge the Federal Circuit toward a narrower concept of definiteness (making it easier to invalidate claims). But it seems quite likely that its effort to do so will turn out to have made the boundary between definite and indefinite even less clear than it was before the Court addressed the question. To be sure, the Justices are properly concerned that broad pronouncements about patent law could lead to unforeseen destabilization of topics the Court had no intention of addressing. But if the Court is willing to step in and criticize the Federal Circuit as sternly as it does here, you might think it could put a little more content in its alternative vision. An outsider might have thought that the rather disastrous group of opinions presented to the Court in Alice Corp. v. CLS Bank International – born from the Court’s similarly uninformative opinion in Bilski c. Kappos – would have underscored the risks of offering such a vague and unspecified piece of guidance as this.
PLAIN LANGUAGE: The federal patent law requires that the claims in a patent “definitely” describe the patented invention. The Supreme Court in this case decided that the court of appeals should be more critical of patents. Now, a patent should be indefinite, which means invalid, if it does not describe the invention “with reasonable certainty.” This will mean that the courts will throw out more patents for poor drafting now than they did under the earlier test.