You’ve probably realized this by now, but the Supreme Court is having a very busy term when it comes to patent cases. In Nautilus, Inc. v. Biosig Instruments, Inc.—scheduled for oral argument on April 28—the Court will consider whether to hold vague patents to a more exacting standard.
For those of us that deal with patents regularly, especially defending against assertions from non-practicing entities, the idiom "better the devil you know than the devil you don’t" rings true. If you’ve ever read a devilishly vague patent claim, you might appreciate the Federal Trade Commission’s conclusion from its recent study:
When patents provide clear notice of their boundaries … parties [are able] to contract efficiently, with confidence as to the technology rights that are conveyed, facilitating both collaboration among firms with complementary expertise and competition among inventions in technology markets. … Poor patent notice[, on the other hand,] undermines innovation and competition by raising the risk of ... infringement and imposing ‘a very high overhead’ on innovation.
FTC, The Evolving IP Marketplace: Aligning Patent Notice and Remedies with Competition 72,74 (Mar. 2011).
A patent’s boundaries are defined by its claims. Just like a deed sets forth the boundaries of real property, a patent’s claims set forth the boundaries of intellectual property. And when a deed does not describe conveyed real property with sufficient accuracy, the conveyance fails. Similarly, in theory when a patent’s claims are too vague, referred to in the law as being indefinite, the patent is invalid. The relevant statute requires that patent claims "particularly point out and distinctly claim the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2. But under current law interpreting the statute, courts bend over backward to avoid holding patents invalid for being overly vague; unless a claim is "insolubly ambiguous," it is upheld as valid.
The Supreme Court, by taking the Nautilus case, might change that rule and push back against overly vague patents. In the decision that is on appeal, the Federal Circuit held that a court cannot invalidate a claim as indefinite unless the claim is found, notwithstanding efforts to divinine a construction, to have no discernible meaning. Red Hat, with other technology companies, including Amazon and Google, have filed a friend of the Court brief that urges the Court to adopt a rule that aligns with the statute.
The amicus brief argues that clarity is required when the patent issues. Under the current standard, courts can save vague patents; the Federal Circuit has held: "If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds." Exxon Research & Eng’g Co. v. United States, 265 F.3d 1371, 1375 (Fed. Cir. 2001). So the public doesn’t know what a patent’s vague claim means until a court tells us in litigation. This defeats the public notice function of the patent system: "the very purpose" of a patent claim is to "mak[e] the patentee define precisely what his invention is." White v. Dunbar, 119 U.S. 47, 52 (1886).
It has been said that good fences make good neighbors. The current standard for indefiniteness doesn’t allow neighbors to know where the property line is, which means you don't know whose property you're on until a court tells you. We hope that the Supreme Court will reverse the Federal Circuit’s decision and give us clearer boundaries for resolving our property disputes.