Completing the Picture of Uncertain Patent Scope
13 Pages Posted: 14 Mar 2014 Last revised: 8 Nov 2015
Date Written: June 6, 2014
Late this Term, the Supreme Court tackled the problem of rampant uncertainty in patent scope in Nautilus, Inc. v. Biosig Instruments, Inc. For over a decade, uncertain patent scope has been blamed on the Federal Circuit’s failed claim construction rules. Yet, the Supreme Court chose to tackle uncertain claim scope by reviewing the Federal Circuit’s standard for invalidating a patent as indefinite, not its claim construction rules. Surprisingly, the materials submitted to the Supreme Court almost entirely ignored the claim construction problems that have consumed academics, judges, and practitioners for years. My essay fills this gap and provides the complete picture of the intertwined relationship of claim construction, indefiniteness, and uncertain patent scope. Due to the problems created by the Federal Circuit’s claim construction rules, the Supreme Court faced two bad choices in Nautilus: either affirm the Federal Circuit’s indefiniteness standard and endorse rampant uncertainty in claim scope or tighten the indefiniteness standard and imperil large swaths of patents. The result was an opinion that did not say very much. The only logical way to address uncertain claim scope is to first fix claim construction. With improved claim construction, the Federal Circuit’s indefiniteness standard surprisingly turns out to be optimal.
Keywords: patent, indefiniteness, claim construction, Supreme Court
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