Supreme Court Defines Standard For Holding a Patent Indefinite

Supreme Court Defines Standard For Holding a Patent Indefinite

 WASHINGTON, D.C. — (Mealey's) Vacating an April 2013 ruling by the Federal Circuit U.S. Court of Appeals, the U.S. Supreme Court held June 2 that “a patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention” (Nautilus Inc. v. Biosig Instruments Inc., No. 13-369, U.S. Sup.) [lexis.com subscribers may access Supreme Court briefs and the opinion for this case]

The court, in an opinion written by Justice Ruth Bader Ginsburg, acknowledged the need to “reconcile concerns that tug in opposite directions” when determining a proper standard for indefiniteness under 35 U.S. Code Section 112, Paragraph 2.

“The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable,” the Supreme Court held.

Claims Construed

Respondent Biosig Instruments Inc. is the assignee of U.S. patent No. 5,337,753, 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 petitioner Nautilus Inc., an exercise equipment manufacturer, 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.

Rehearing Denied

On appeal, a divided Federal Circuit panel reversed the District Court’s decision (Biosig Instruments, Inc. v. Nautilus, Inc., No. 12-1289, Fed. Cir.) [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 Supreme Court, which granted the petition on Jan. 10. Oral arguments were held April 28.

Clear Notice

Vacating and remanding, the Supreme Court found that the Federal Circuit’s “formulation . . . 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,” the Supreme Court held.

Pursuant to Markman v. Westview Instruments, Inc., 517 U. S. 370, 373 (1996) [enhanced version], McClain v. Ortmayer, 141 U.S. 419, 424 (1891) [enhanced version] and United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942) [enhanced version], the Supreme Court wrote that “a patent must be precise enough to afford clear notice of what is claimed” in order to avoid a “zone of uncertainty.” 

“Absent a meaningful definiteness check, we are told, patent applicants face powerful incentives to inject ambiguity into their claims. Eliminating that temptation is in order, and ‘the patent drafter is in the best position to resolve the ambiguity in . . . patent claims,’” the Supreme Court added, citing Halliburton Energy Servs., Inc. v. M–I LL, 514 F. 3d 1244, 1255 (CA Fed. 2008) [enhanced version].

Intolerable Imprecision

After finding support for its newly announced standard in previous cases, the Supreme Court opined that the “amenable to construction” and “insolubly ambiguous” language utilized by the Federal Circuit could “breed lower court confusion” because those terms “lack the precision §112, ¶2 demands.”

“It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty,’ against which this Court has warned,” the Supreme Court continued, again citing United Carbon.

Lastly, the Supreme Court wrote that it expresses “no opinion” on the validity of the ‘753 patent.

“We remand, instructing the Federal Circuit to decide the case employing the standard we have prescribed,” the Supreme Court ruled.

Counsel

Nautilus is represented by James E. Geringer, Jeffrey S. Love, John D. 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.

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