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Nautilus, Inc. v. Biosig Instruments, Inc. - 572 U.S. 898, 134 S. Ct. 2120 (2014)

Rule:

Cognizant of the competing concerns, the Supreme Court of the United States reads 35 U.S.C.S. § 112, para. 2 to require 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. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard the Court adopts accords with opinions of the Court stating that the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter. Claims must be reasonably clear-cut.

Facts:

Respondent patent holder Biosig filed a patent infringement suit against petitioner Nautilus, Inc. alleging that Nautilus sold exercise machines containing Biosig's patented technology without obtaining a license.The patent in dispute concerned a heart-rate monitor for use during exercise. The patent claim comprised, among other elements, a live electrode and a common electrode mounted in spaced relationship with each other. The District Court granted Nautilus' motion for summary judgment after conducting a hearing to determine the proper construction of the patent's claims, on the ground that the claim term “in spaced relationship with each other” failed the definiteness requirement of §112 of the Patent Act, which requires that a patent specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention. It did not supply any parameters for determining the appropriate spacing. The Federal Circuit reversed and remanded, holding that a claim was indefinite only when it was not amenable to construction or was insolubly ambiguous, and it found that the patent-in-suit satisfied that test. 

Issue:

In a definiteness challenge under Section 112 of the Patent Act, did the United States Court of Appeals err when it sought to determine whether the patent's claims were “amenable to construction” or “insolubly ambiguous?"

Answer:

Yes

Conclusion:

The judgment of the United States Court of Appeals for the Federal Circuit was vacated and remanded by the Supreme Court of the United States. The Court held that a patent was invalid for indefiniteness if its claims, when read in light of the specification and the prosecution history, failed to inform, with reasonable certainty, those skilled in the art about the scope of the invention. In resolving Nautilus’ definiteness challenge, the Federal Circuit asked whether the 753 patent's claims were “amenable to construction” or “insolubly ambiguous.” The Court stated that those formulations can breed lower court confusion because they lack the precision that §112 of the Patent Act demands. Thus, the Federal Circuit's standard was more amorphous than the statutory definiteness requirement allowed. Accordingly, the Court followed its 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.  The Court expressed no opinion on the validity of the patent-in-suit and instead instructed the Federal Circuit to decide the case employing the indefiniteness standard the Court had prescribed. The Court noted that §112 of the Patent Act entails a “delicate balance.” On the one hand, the definiteness requirement must take into account the inherent limitations of language. At the same time, a patent must be precise enough to afford clear notice of what is claimed.

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