WASHINGTON, D.C. — (Mealeys’) A patent claim is not rendered indefinite simply because it requires interpretation between two or more competing readings, a government attorney told the U.S. Supreme Court on April 28 (Nautilus Inc. v. Biosig Instruments Inc., No. 13-369, U.S. Sup.; See 1/21/14, Page 4) [lexis.com subscribers may access Supreme Court briefs for this case].
Arguing on behalf of the United States as amicus curiae for respondent Biosig Instruments Inc. and in support of an April 2013 ruling by the Federal Circuit U.S. Court of Appeals that Biosig’s U.S. patent No. 5,337,753 is not indefinite, Assistant to the Solicitor General Curtis E. Gannon told the Supreme Court that a patent claim is sufficiently definite when “a person of ordinary skill in the art would reasonably understand the scope of the claim.”
Gannon — and several members of the Supreme Court — nonetheless criticized findings by the Federal Circuit that a claim is indefinite only when it is “not amenable to construction” or “insolubly ambiguous,” however, because, according to Gannon, those terms “could cause mischief if applied in isolation.”
Heart Rate Monitor
Biosig is the assignee of the ‘753 patent, which covers a heart rate monitor for use during exercise or on exercise equipment. The invention consists of a baton held by the user with both hands that contains electronic circuitry to detect heartbeat signals and measure heart rate. According to the patent, the invention is capable of detecting electrocardiograph heart signals more accurately than similar devices by eliminating the overlapping electromyogram (EMG) signals that are produced by muscles during exercise. In 2004, Biosig sued exercise equipment manufacturer Nautilus Inc. in the U.S. District Court for the Southern District of New York, alleging infringement by Nautilus’ predecessor-in-interest Stairmaster Co., which had begun making and selling exercise equipment that included an accused heart-rate monitor. Biosig alleged that Nautilus, after acquiring Stairmaster’s assets, continued to make and sell infringing equipment.
In 2008, while the suit was pending, Nautilus asked the U.S. Patent and Trademark Office to re-examine the ‘753 patent, asserting that the heart monitor was anticipated by and obvious in light of a prior art patent. The parties voluntarily dismissed Biosig’s suit without prejudice while the re-examination proceedings were pending. After the PTO confirmed the validity of Biosig’s patent in 2010, the District Court held a hearing to construe disputed patent claim terms. Among other terms, the parties disputed the meaning of the “spaced relationship” between electrodes on each side of the monitor. The District Court construed “spaced relationship” to mean “a defined relationship” between the electrodes that could be “the same or . . . different” on each side.
Nautilus moved for summary judgment, arguing that the ‘753 patent was indefinite and invalid under 35 U.S. Code Section 112 because the patent term “spaced relationship” was ambiguous and failed to “particularly” point out and “distinctly” claim the invention. Biosig countered that one skilled in the art could determine the appropriate spaced relationship through trial-and-error testing. The District Court granted Nautilus summary judgment, finding that claims 1 and 11 are indefinite under Section 112 and, therefore, invalid. The court held that the term “spaced relationship” “did not tell [the court] or anyone what precisely the space should be” and did not provide “any parameters as to what the space should be” or even indicate “whether the spaced relationship on the left side should be the same as the spaced relationship on the right side.” The District Court said there was “nothing in the specifications or the claim or the file history to teach” one skilled in the art that a particular “proper spacing . . . should be used” to cancel out the EMG muscle signals.
On appeal, a divided Federal Circuit panel reversed the District Court’s decision (Biosig Instruments, Inc. v. Nautilus, Inc., No. 12-1289, Fed. Cir.; See 5/6/13, Page 14) [an enhanced version of this opinion is available to lexis.com subscribers]. While the panel majority and concurrence reached conflicting conclusions about what the disputed claims mean, both the majority and concurrence determined that the claims are not indefinite. “Because the term was amenable to construction, indefiniteness here would require a showing that a person of ordinary skill would find ‘spaced relationship’ to be insolubly ambiguous — that it fails to provide sufficient clarity delineating the bounds of the claim to one skilled in the art. In this case, a skilled artisan would find such boundaries provided in the intrinsic evidence,” the Federal Circuit held.
Nautilus sought rehearing en banc, asking the Federal Circuit to revisit its “insolubly ambiguous” test. After the request was denied, Nautilus filed a petition for writ of certiorari with the U.S. Supreme Court, which granted the petition on Jan. 10.
Attorney John D. Vandenberg, representing Nautilus, opened oral arguments by cautioning the Supreme Court on the implications of affirming the Federal Circuit. “The Patent Act requires particular and distinct claims, but the claim in this case is not particular and distinct,” Vandenberg said. “It is ambiguous because it has two reasonable readings with very different claim scopes, even after all of the interpretive tools are applied.
“Such ambiguous claims defeat the public notice function which is at the heart of Section 112, and they increase litigation. They cause more claim construction disputes, and they cause more reversals of district court claim construction rulings. Taken all together, ambiguous claims and the Federal Circuit’s test allowing ambiguous claims defeats the very purpose of Section 112 and the patent system, namely, to encourage and promote innovation by others after the first patent issues,” he added.
Trial And Error
Justice Ruth Bader Ginsburg questioned Vandenberg’s assertion of ambiguity, however. Noting that “it’s evident that these electrodes have to be close enough so that the user’s hand contacts both electrodes, but separate enough to keep the electrodes distinct,” Justice Ginsburg asked, “Why isn’t that sufficiently definite?”
In response, Vandenberg argued that there are other “reasonable” constructions for the claim than the one offered by Justice Ginsburg, including that “the spaced relationship is a special spacing . . . derived by trial and error testing, to get the spacing just right.” Justice Antonin Scalia scoffed at Vandenberg’s suggestion, however.
“I don’t really understand this trial and error spacing stuff. What is the limit on trial and error? Can you get patented anything when you say, ‘You know, this is the basic principle, you figure out what — you know, what makes it work,’” Justice Scalia said.
“The ambiguity is that this claim either covers all possible spacing of the electrodes within the boundaries that we’ve discussed or it only covers special spacings of the electrodes that are a result of trial and error in order to achieve the desired result. Those are hugely different claim scopes and that uncertainty between those two is what would chill innovation,” Vandenberg maintained.
‘Tuning A Radio’
Attorney Mark D. Harris, representing Biosig, was pressed by Judge Scalia to defend the “really extravagant language” used by the Federal Circuit in articulating its “insolubly ambiguous” standard, a formulation Chief Justice John G. Roberts Jr. said “nobody agrees with.” Harris responded that Biosig “would completely agree” that the proper test “needs to include what the skilled artisan would have understood at the time” and argued that the Federal Circuit’s application of the standard in the underlying ruling makes it “quite clear” that the appellate panel “was looking to what the evidence was, as to what skilled artisans would do with this claim language.”
Harris then defended the validity of the ‘753 patent on grounds that “skilled artisans” were able to determine the proper spacing “very quickly.”
“It’s not trial and error as if it’s throwing darts and just seeing what might work,” he continued. “It’s just like tuning a radio.”
Justice Scalia was unconvinced, however.
“You know, I can understand that if the claim said that. If the claim said, you know, fiddle with it until it works. But it doesn’t say that. It just says, you know, ‘spacing,’ and I would think so long as there’s space, they don’t touch, and they’re no more than the widths of the hands, it’ll work. It doesn’t say that. I don’t think the ‘whereby’ is an invitation to experiment,” Justice Scalia said.
Finally, Gannon explained the government’s position that if there are two constructions that are “[of] nearly equal persuasiveness,” then a claim term could be considered ambiguous. However, “if one construction is appreciably better, then that is good enough without having to take the second step of saying that the second best construction . . . is also unreasonable,” Gannon said.
Justice Stephen Breyer said that although Gannon’s proposal is “certainly attractive,” it nonetheless presents problems of its own.
“What worries me about that . . . is that lawyers will come up with all kinds of experts, you know. And quite often, if this situation ever arises, and I don’t know if it really ever does, it could reflect a difference of opinion among scientists. I mean, you could have those who followed the phlogiston logistic theory of fire. You could have those who follow the oxygen theory of fire. All we have to do is update that, and you could find different experts who would have different opinions while all agreeing that it is absolutely clear,” Justice Breyer lamented.
Justice Scalia agreed, asking, “When do we ever decide a case in which we would not say that our result is appreciably better than the result we reject?” Gannon responded that some cases present “an authentically closer question,” but Justice Scalia remained skeptical.
“Well, it’s still close, but not appreciably better. If it’s not appreciably better, we would have to say it’s a draw. . . . I think the test you’re giving us is not much of a test, it really isn’t. It seems to me it says so long as there is a right answer, everything else is wrong,” Justice Scalia added.
Nautilus is represented by James E. Geringer, Jeffrey S. Love, Vandenberg and Philip Warrick of Klarquist Sparkman in Portland, Ore., and Thomas G. Hungar, Matthew D. McGill and Jonathan C. Bond of Gibson, Dunn & Crutcher in Washington. Mark D. Harris, James H. Shalek and Celia V. Cohen of Proskauer Rose in New York, Steven M. Bauer, John E. Roberts, Anthony H. Cataldo and Jinnie Reed of Proskauer Rose in Boston and Sean M. Handler and Daniel C. Mulveny of Kessler, Topaz, Meltzer & Check in Radnor, Pa., represent Biosig.
Solicitor General Donald B. Verrilli Jr., Assistant Attorney General Stuart F. Delery, Deputy Solicitor General Malcolm L. Stewart, Gannon and Mark R. Freeman and Dara S. Smith of the Department of Justice in Washington and Nathan K. Kelley, Kristi L.R. Sawert and Stacy B. Margolies of the PTO in Alexandria, Va., represent the government.
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