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Nautilus, Inc. v. Biosig Instruments, Inc.

Supreme Court of the United States

April 28, 2014, Argued; June 2, 2014, Decided

No. 13-369

Opinion

 [*901]  [**2124]   Justice Ginsburg delivered the opinion of the Court.

The Patent Act requires that a patent specification “conclude with  [***43]  one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the]  [****6] invention.” 35 U. S. C. §112, ¶2 (2006 ed.) (emphasis added). This case, involving a heart-rate monitor used with exercise equipment, concerns the proper reading of the statute’s clarity and precision demand. According to the Federal Circuit, a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.”  [1690] 715 F. 3d 891, 898-899 (2013). We conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the “insolubly ambiguous” standard, we hold 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. Expressing no opinion on the validity of the patent-in-suit, we remand, instructing the Federal Circuit to decide the case employing the standard we have prescribed.

Authorized by the Constitution “[t]o promote the Progress of Science and useful Arts, by securing for limited Times to . . . Inventors the  [****7] exclusive Right to their . . . Discoveries,” Art. I, §8, cl. 8, Congress has enacted patent laws rewarding inventors with a limited monopoly. “Th[at] monopoly is a property right,” and “like any property right, its boundaries  [*902]  should be clear.” Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722, 730, 122 S. Ct. 1831, 152 L. Ed. 2d 944 (2002). See also Markman v. Westview Instruments, Inc., 517 U. S. 370, 373, 116 S. Ct. 1384, 134 L. Ed. 2d 577 (1996) (“It has long been understood that a patent must describe the exact scope of an invention and its manufacture . . . .”). Thus, when Congress enacted the first Patent Act in 1790, it directed that patent grantees file a written specification “containing a description . . . of the thing or things . . . invented or discovered,” which “shall be so particular” as to “distinguish the invention or discovery from other things before known  [**2125]  and used.” Act of Apr. 10, 1790, §2, 1 Stat. 110.

The patent laws have retained this requirement of definiteness even as the focus of patent construction has shifted. Under early patent practice in the United States, we have recounted, it was the written specification that “represented the key to the patent.” Markman, 517 U. S., at 379, 116 S. Ct. 1384, 134 L. Ed. 2d 577. Eventually, however, patent applicants  [****8] began to set out the invention’s scope in a separate section known as the “claim.” See generally 1 R. Moy, Walker on Patents §4.2, pp. 4-17 to 4-20 (4th ed. 2012). The Patent Act of 1870 expressly conditioned the receipt of a patent on the inventor’s inclusion of one or more such claims, described with particularity and distinctness. See Act of July 8, 1870, §26, 16 Stat. 201 (to obtain a patent, the inventor must “particularly point out and distinctly claim the part, improvement, or combination which [the inventor] claims as his invention or discovery”).

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572 U.S. 898 *; 134 S. Ct. 2120 **; 189 L. Ed. 2d 37 ***; 2014 U.S. LEXIS 3818 ****; 110 U.S.P.Q.2D (BNA) 1688; 82 U.S.L.W. 4433; 24 Fla. L. Weekly Fed. S 799; 2014 WL 2440536

NAUTILUS, INC., Petitioner v. BIOSIG INSTRUMENTS, INC.

Notice: The LEXIS pagination of this document is subject to change pending release of the final published version

Subsequent History: As corrected June 10, 2014.

On remand at, Remanded by Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 2015 U.S. App. LEXIS 6851 (Fed. Cir., Apr. 27, 2015)

Prior History:  [****1] ON WRIT OF CERTIORARI TO THE UNITED STATES COURT OF APPEALS FOR THE FEDERAL CIRCUIT

Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 2013 U.S. App. LEXIS 8486 (Fed. Cir., 2013)

Disposition: Vacated and remanded.

CORE TERMS

patent, electrode, signals, spaced, ambiguous, invention, skilled, specification, insolubly, detected, cylindrical, monitor, indefinite, inventor, artisan, reexamination, heart-rate, amenable, parties, user’s

Patent Law, Specifications, Definiteness, General Overview, Precision Standards, Constitutional Law, Congressional Duties & Powers, Copyright & Patent Clause, Defenses, Patent Invalidity, Grounds, Infringement Actions, Claim Interpretation, Fact & Law Issues, Aids & Extrinsic Evidence, Jurisdiction & Review, Standards of Review, Evidence, Burdens of Proof, Clear & Convincing Proof, Burdens of Proof, Presumption of Validity, Civil Procedure, US Supreme Court Review