The Supreme Court's Tightening Of Patent Definiteness & The Impact Of Nautilus v. Biosig On The Software Patent Industry

INTRODUCTIONPatents, particularly software patents, are typically wide and unclear in scope. Ambiguity in claims makes it difficult to determine when an invention infringes on existing patented technology and creates problems for competitors. Software patents are particularly vulnerable to this problem because of the constantly changing nature of the technology and the inability of the law to keep up with such changes.1Patent claim drafting is a balancing act: claim writers must tread the fine line between giving away too much information and risking an ineffective patent, or giving away too little and obtaining a broad or unclear patent that may lead to future patent disputes.2 Claim clarity is critical to a properly functioning patent because it notifies the public about the bounds of the patent, the elements on which the patentee has an exclusive right, and what remains open to the public.3 Therefore, it is important that courts are equipped with a proper standard for determining when patents are ambiguous and invalid.One of the factors weighed in determining the validity of a patent is definiteness.4 Patent definiteness refers to the metes and bounds of a patent and how well they are delineated.5 The U.S. Supreme Court recently lowered the bar for proving patent indefiniteness. In Nautilus, Inc. v. Biosig Instruments, Inc., the Court vacated a U.S. Court of Appeals for the Federal Circuit (Federal Circuit) decision which upheld the validity of a patent under the Federal Circuit's standard for definiteness pursuant to 35 U.S.C. 112.6 The Federal Circuit's standard held that a patent is valid if the claim is amenable to construction and not insolubly ambiguous.7The ramifications of Nautilus will likely have a significant impact on the software patent industry because of the inherent ambiguity in software patents. One of the difficulties faced by software patent developers is that software patents rely on technology that is difficult to explain in claims because of the lack of adequate terminology. Recognizing the seriousness of this problem, the White House launched a glossary pilot project in early 2014 to promote patent clarity.8 Despite strong arguments in favor of abolishing software patent protection, the Supreme Court's decision in Nautilus demonstrates that the Court is looking to improve the software patent system rather than abolish it.I. Development of Software Patent Law and the Current Challenges in Claim DraftingAt the beginning of the digital era, the Supreme Court completely denied patent protection to software.9 However, in the last few decades the Court has expanded the scope of patent protection to include software technology. Yet even with this expanded scope, strict guidelines remain to determine which inventions are patentable. For example, patents are not issued for laws of nature, physical phenomena, and abstract ideas,10 or mathematical formulas and algorithms.11 Despite such guidelines, the Supreme Court has recently found the need to further tighten the scope of software patent protection due to an increasing rate of litigation and an equal increase in costs to patent owners and businesses.While Nautilus was the most recent example of the Supreme Court tightening patent protection, it was not the first. Nautilus was preceded by Alice Corp. Pty. Ltd. v. CLS Bank International, in which the Court increased the threshold for software patent subject matter eligibility.12 Alice involved a patent on an intermediate-settlement system for approving financial transactions.13 In Alice, the dispute was about patentable subject matter and the Supreme Court invalidated the patent. The Court found that the claims were drawn to an abstract idea, and that abstract ideas did not warrant patent protection merely because they were carried out on a computer; they needed to go above and beyond and show some kind of transformation.14 Immediately following Alice, patent holders and practitioners were relieved to find that the Court had not put all abstract concepts at risk, as they had feared. …