Uncertain patent scope is perhaps the most significant problem facing the patent system. Uncertainty in patent rights leads to avoidable infringement; suppressed competition; inefficient innovation, investment, and licensing decisions; increased business costs; and unnecessary litigation. This uncertainty has long been blamed on the Federal Circuit’s rules for interpreting claims, the short summaries at the end of the patent that define the patentee’s exclusive rights.
Near the end of this Term, the Supreme Court tackled uncertain patent scope in Nautilus, Inc. v. Biosig Instruments, Inc., but not by addressing interpretation of patent claims (known as claim construction). Instead, the Supreme Court addressed the standard for determining whether patent claims are invalid as indefinite for failing to “particularly point[] out and distinctly claim[]” the invention. Suddenly, large segments of the patent community blamed uncertain patent scope on the Federal Circuit’s lax indefiniteness standard, which only invalidated a claim “when it is not amenable to construction or insolubly ambiguous.” Tightening the indefiniteness standard—whether by rendering a claim indefinite when it “is susceptible of more than one reasonable interpretation,” as Nautilus and some amici proposed, or only when it is not “reasonably clear” to people working in the field, as other amici proposed—was said to be a panacea that would provide “competitors and the public with clear guidance on what is and is not prohibited.”
The well-established problems with the Federal Circuit’s claim construction rules were almost entirely ignored in the materials submitted to the Supreme Court. Rather, the Court was incorrectly told that claim construction has “no bearing on whether the boundaries of the claim itself are definite to a skilled artisan”; that indefiniteness is resolvable without the need for claim construction; and even that claim construction is “a task that courts are well-equipped to undertake using existing law.” As a result, the Supreme Court resolved Nautilus with only a partial view of uncertain patent scope, a view that did not include what was widely seen as the source of the problem until the Court granted certiorari in Nautilus. In doing so, the Supreme Court held “that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention,” without providing any further guidance as to what constituted “reasonable certainty.” Early commentary has been critical of this lack of guidance, with one commentator concluding, “we know very little more about the subject now that we’ve seen the opinion than we did before.”
This Commentary completes the picture by addressing the intertwined relationship of claim construction, indefiniteness, and uncertain patent scope. Claim construction is a necessary threshold step and, if effective, can resolve uncertainties in claim scope, reducing the need to invalidate claims as indefinite, as discussed in Part II. Part III demonstrates how the Federal Circuit’s failed claim construction rules accentuate, rather than resolve, ambiguities in claim scope. Part IV explains how the ineffectiveness of claim construction increases the need for an effective indefiniteness doctrine, but, perversely, both decreased the effectiveness of the Federal Circuit’s pre-Nautilus standard and renders any stricter standard too draconian. Part IV proposes that the best way to address uncertain claim scope is to make claim construction more effective, while, surprisingly, largely retaining the Federal Circuit’s pre-Nautilus indefiniteness standard.