Norton Rose Fulbright: Supreme Court Addresses Indefiniteness In Nautilus

Claim must ‘inform with reasonable certainty’

By Tamsen Barrett

On Monday, June 2, 2014, the Supreme Court articulated its standard for indefiniteness under 35 USC §112, second paragraph and held that 35 USC §112, second paragraph requires that "a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty."  Nautilus Inc. v. Biosig Instruments Inc., No. 13-369, slip op. at 11 [enhanced opinion available to lexis.com subscribers. lexis.com subscribers may access Supreme Court briefs for this case]. This standard replaces the Federal Circuit's long-standing "insolubly ambiguous" test and may leave patents more vulnerable to indefiniteness challenges.

In a unanimous decision vacating and remanding, the Supreme Court stated that the Federal Circuit's "insolubly ambiguous" test falls short of the statutory standard because it "tolerates some ambiguous claims but not others, [and therefore] does not satisfy the statute's definiteness requirement."  Id. at 1.  The Court recognized that the "fuller explications of the term 'insolubly ambiguous,' … may come closer to tracking the statutory prescription," but concluded that terminology such as "insolubly ambiguous" and "amenable to construction" "can leave courts and the patent bar at sea without a reliable compass."  Id. at 12-13.  In place of the "insolubly ambiguous" standard, the Court held that "a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."  Id. at 1. 

Biosig Instruments, Inc. (Biosig) is the assignee of US Patent No. 5,337,753 ('753 Patent), which concerns a heart rate monitor for use during exercise.  Nautilus, No. 13-369, slip op. at 5.  The claims are directed to "a heart rate monitor contained in a hollow cylindrical bar that a user grips with both hands, such that each hand comes into contact with two electrodes, one 'live' and one 'common.'"  Id. at 4.  The claims require "a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other."  '753 Patent at claim 1. 

Biosig brought the patent infringement suit in 2004 in the Southern District of New York, alleging that Nautilus Inc. (Nautilus) had been selling exercise machines that included Biosig's patented technology.  Nautilus, No. 13-369, slip op. at 5.  Nautilus then filed a request for reexamination with the United States Patent and Trademark Office (PTO).  The reexamination proceedings focused on whether or not the claims of the patent were anticipated or rendered obvious by prior art. Id.  In the course of the proceedings, Biosig submitted an expert declaration in support of its contention that that the '753 Patent sufficiently informed a person skilled in the art how to configure the detecting electrodes through experimentation.  Id. at 5.  In 2010, the PTO issued a determination of patentability of the '753 claims.  Id. at 6. 

Biosig then reinstated its infringement suit with the District Court.  The court ultimately construed the claim term "spaced relationship" to mean "there is a defined relationship between the live electrode and the common electrode on one side of the cylindrical bar and the same or a different defined relationship between the live electrode and the common electrode on the other side of the cylindrical bar."  Id. at 6.  Nautilus moved for summary judgment asserting that the term "spaced relationship," as construed, was indefinite under 35 USC § 112, second paragraph.  Id.  The motion was granted on the grounds that the term at issue "did not tell [the court] or anyone what precisely the space should be or even supply any parameters for determining the appropriate spacing."  Id. at 6-7 (internal quotations omitted).  A Federal Circuit panel reversed and remanded, reaffirming that court's standard that a claim is indefinite only when it is not amenable to construction or insolubly ambiguous.  Id. at 7.  The Federal Circuit determined that, considering the claim language, the specification, and the prosecution history, the meaning of "spaced relationship" would be clear to a skilled artisan.  Id.  The Supreme Court granted certiorari.  Id.

After holding that “a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention,” the Court declined to apply that standard to the controversy between Nautilus and Biosig.  Id. at 14.  Instead, the Court chose to “follow our ordinary practice of remanding so that the Court of Appeals can reconsider, under the proper standard, whether the relevant claims in the ’753 patent are sufficiently definite.”  Id.  Therefore, the contours of how the Supreme Court’s standard are to be applied will be left to the Federal Circuit to determine on remand and in future cases.

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