A Little Help Here, Supreme Court?

I want to first thank Dan and the PrawfsBlawg folks for letting me holdover through June.  May went by much too quickly (and without any patent law excitement from the Supreme Court).  Hopefully the month of June will be a little more laidback, albeit filled with good stuff to blog about.  

Perhaps as a good omen, or at least a positive start to the month, the Supreme Court issued two patent opinions this morning:  Limelight Networks v. Akamai Technologies and Nautilus v. Biosig Instruments.

I have some thoughts on Limelight (which came out as I had hoped), but I want to talk about the Nautilus case and a possible pattern that concerns me, especially given the Supreme Court's ever-growing interest in taking patent law cases.  Concisely, but cynically, I think the best way to describe a number of the recent Supreme Court patent cases is "Thanks for nothing."

35 USC section 112 imposes what is termed the "definiteness" requirement.  Basically a patent must conclude with one or more claims that "particularly point[] out and distinctly claim[] the subject matter" of the invention at issue.  The purpose of the provision is that, based on these claims, the world should be put on notice of what is part of the inventor's exclusive territory and what is not.  Of course, it's difficult to define the boundaries of an invention with words.  The Court acknowledges this tension between the "inherent limitations of language" and the need for a meaningful level of precision.

To put some flesh on the definiteness requirement, the Federal Circuit had defined it to mean that the claim language was "amenable to construction" and was not "insolubly ambiguous."  In the Nautilus case, the Supreme Court reversed the Federal Circuit, stating that a claim is indefinite if it fails to inform, with reasonable certainty, a person skilled in the relevant technological area about the scope of the invention.  The case was remanded to the Federal Circuit to review under the altered test for indefiniteness.

I have no issue with the Supreme Court's determination that the Federal Circuit's test was incorrect.  The problem, as I see it, is that the Supreme Court's test is basically a reiteration of the word "indefinite."  There is no flesh on the bones, no actual test or standard or rule for lower courts to latch on to.  How do you know if something is indefinite?  It isn't definite.  I'm pretty certain my 3rd grade teacher wouldn't have allowed me to get away with that explanation -- let alone the Supreme Court.  If the Federal Circuit is getting it wrong (and, according to the Supreme Court, causing confusion in the lower courts), then wouldn't the correct response be to provide an alternative?

And it isn't just limited to the Nautilus case.  For example, proper subject matter for patenting, particularly in the software and computer-related inventions area, has been a hot topic for a number of years A few years ago, the Supreme Court was set to provide an answer in Bilski v. Kappos.  The Federal Circuit had implemented the "machine or transformation" test for software-type inventions -- the invention either had to be implemented with a particular machine or transform an article from one thing or state to another.  One reason the Federal Circuit had implemented this test is that lower courts and the Patent Office seemed to be all over the board on the patent eligibility for these types of invention, so a stricter, bright-line rule made sense.  However, the Supreme Court said the Federal Circuit's test was not correct (although it was one way to determine whether an invention of this type was patent eligible).  Rather than giving an alternative test, standard, or rule, the Supreme Court directed the courts and the Patent Office to look at its 30-year old precedent and figure it out.  This is the same precedent that had been jumbled to the point that the Federal Circuit felt compelled to create the machine-or-transformation test.

There are other examples that I'm drawing a blank on right now -- it's Monday morning after all.  

I am not a Federal Circuit apologist.  The Supreme Court should occasionally step in and fix what the Federal Circuit is getting wrong.  But in order to "fix" anything, the Supreme Court has to provide a little guidance - not just repeat the test or point to jumbled precedent.  In doing that, it is not improving the situation, but rather muddling it further.  Is it too much to ask for the Court to provide direction for a new test, standard, or rule when it decides the old one is wrong?

On that note, the Supreme Court is set to issue another opinion on the patent eligibility of software and computer-related inventions this month in Alice Corp. v. CLS Bank.  Let's hope, after the Supreme Court tells the Federal Circuit it got thing wrong...which, with seven opinions issuing from a ten judge panel, seems likely - let's hope that the Supreme Court gives us a little help.