Virtually every lawyer is familiar with the rules versus standards trade-off. Rules provide clearer guidance but sometimes produce bad results (i.e. “loopholes”). Standards provide more flexibility but at the cost of diminishing ex ante notice. For a high level court such as the Supreme Court, the degree of specificity with which to announce a doctrine—and, correspondingly, the amount of discretion to leave to lower courts to develop the doctrine in future cases—typically involves the basic tradeoff between ex ante notice and ex post flexibility.
In patent law, one additional complication is the specialized nature of the Court of Appeals for the Federal Circuit. Because the Federal Circuit is a specialized court, it has much more expertise about patent law than the Supreme Court does. And because many doctrines in patent law are intrinsically difficult to elaborate with precision, what often ends up happening is that the Supreme Court will reverse the Federal Circuit, but do so in a standard-like way that essentially leaves future development of the law in the Federal Circuit’s hands.
A recent example is Nautilus v. Bioseg Instruments, concerning the indefiniteness doctrine. The indefiniteness doctrine holds that a patent claim that is excessively vague or ambiguous is void. The question is how indefinite is too indefinite. The Federal Circuit’s traditional articulation of the test is that a claim is indefinite if it is “insolubly ambiguous.” The Supreme Court rejected this formulation and instead held that a claim is indefinite if it does not provide “reasonable certainty.” It then remanded to the Federal Circuit to apply this new test. Older cases in other areas of patent law show a similar tendency to remand to the Federal Circuit to apply an open-ended new standard with minimal guidance or constraint.
From one perspective, the Supreme Court’s preference for patent law standards and open-ended remands to the Federal Circuit is a good thing. The Federal Circuit in fact has more expertise about patent law, and it is better situated to develop the doctrine in this area. But one major reason that the Supreme Court has been granting so many patent cases in recent years is because it views the judges of the Federal Circuit as excessively pro-patentee. If that is the problem, replacing one set of open-ended words (“insolubly ambiguous”) with another set of open-ended words (“reasonable certainty”) seems likely to do very little.