The United States Supreme Court is set to address the Federal Circuit’s standard of invalidity for indefiniteness in Biosig Instruments, Inc. v. Nautilis, Inc., long-criticized as a boon for so-called “patent trolls.” The Supreme Court has certified two questions: “(1) whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretationsso long as the ambiguity is not ‘insoluble’ by a courtdefeats the statutory requirement of particular and distinct patent claiming; and (2) whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.” 

In Biosig, the Federal Circuit reversed the lower court’s ruling of invalidity on the basis of indefiniteness. The Federal Circuit held that a claim term is “insolubly ambiguous” when “reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of a claim.” Biosig Instruments, Inc. v. Nautilis, Inc., 715 F.3d 891, 898 (Fed. Cir. 2013). On appeal, Nautilis argued that the Federal Circuit has misinterpreted the Patent Act in formulating and applying the “insolubly ambiguous” standard. See 35 U.S.C. 112(b) (“The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.”) (emphasis added). 

This ruling will have a significant influence not only on patent practice, but on federal officials’ growing concern over the actions of non-practicing entities. In the last year, the White House and Congress have proposed multiple bills to reign in the action of non-practicing entities, otherwise known as “patent trolls.” These efforts include: requiring non-practicing entities to make certain disclosures in demand letters; requiring more specificity in patent infringement complaints; increasing transparency of patent ownership; providing better protection for end users who are oftentimes small businesses; and empowering the Federal Trade Commission to consider bad-faith demand letters an “unfair or deceptive act or practice” under 15 U.S.C. § 45(a)(1). 

Opponents of these proposed bills argue that this type of legislation could place limits on pleadings and discovery in addition to intruding on the realm of the judiciary. Members of the biotechnolology and pharmaceutical industries, as well as universities, fear that licensing practices and revenues could be negatively affected by legislation seeking to curb enforcement of their patent rights. 

At the heart of many of the issues addressed in the proposed “anti-troll” legislation are countless patents with unclear claim terms, often asserted successfully by non-practicing entities. Of course, broad patent claims that currently pass the Federal Circuit’s “insolubly ambiguous” standard may not pass a stricter standard as sought in Biosig. If the Supreme Court reverses the Federal Circuit and formulates a new standard modeled after § 35 U.S.C. 112(b), it is possible that Congress will allow the Judiciary to curb predatory litigation tactics according to established principles of jurisprudence rather than according to the whims of ever-wavering elected officials.