Nautilus, Inc. v. Biosig Instruments: SCOTUS On How Much Imprecision §112, ¶2 Tolerates

Category: 112 - Definiteness  
 By: Jesus Hernandez, Blog Editor/Contributor 
TitleNautilus, Inc. v. Biosig Instruments, Inc., No. 13-369 (June 2, 2014).
IssueThis case, involving a heart­ rate monitor used with exercise equipment, concerns the proper reading of the statute’s clarity and precision de­ mand. 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.” 715 F. 3d 891, 898–899 (2013).
Nautilus, Inc. at *1.
HoldingWe 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.
Id. at at *1.
Editor's Notes
For further insight, check out the Audio Brief of oral arguments in Nautilus, Inc. v. Biosig Instruments by clicking here.
Procedural HistoryThe dispute between the parties arose in the 1990’s, when Biosig allegedly disclosed the patented technology to StairMaster Sports Medical Products, Inc. According to Biosig, StairMaster, without ever obtaining a license, sold exercise machines that included Biosig’s patented technol­ogy, and petitioner Nautilus, Inc., continued to do so after acquiring the StairMaster brand. In 2004, based on these allegations, Biosig brought a patent infringement suit against Nautilus in the U. S. District Court for the South­ ern District of New York. With Biosig’s lawsuit launched, Nautilus asked the U. S. Patent and Trademark Office (PTO) to reexamine the ’753 patent. […] In 2010, the PTO issued a determination con­ firming the patentability of the ’753 patent’s claims. Biosig thereafter reinstituted its infringement suit, which the parties had voluntarily dismissed without prej­udice while PTO reexamination was underway. […] Nautilus moved for summary judgment, arguing that the term “spaced relationship,” as construed, was indefi­nite under §112, ¶2. The District Court granted the mo­tion. […] The Federal Circuit reversed and remanded. A claim is indefinite, the majority opinion stated, “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” […]
Nautilus, Inc. at *5-7 (internal citations omitted).
Legal Reasoning (JUSTICE GINSBURG for the Court)
Claim at IssueClaim 1 of the ’753 patent, which contains the limitations critical to this dispute, refers to a “heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures.” [...] The claim “com­ prise[s],” among other elements, an “elongate member” (cylindrical bar) with a display device; “electronic circuitry including a difference amplifier”; and, on each half of the cylindrical bar, a live electrode and a common electrode “mounted ... in spaced relationship with each other.” [...] The claim sets forth additional elements, including that the cylindrical bar is to be held in such a way that each of the user’s hands “contact[s]” both electrodes on each side of the bar. [...] Further, the EMG signals detected by the two electrode pairs are to be “of substan­tially equal magnitude and phase” so that the difference amplifier will “produce a substantially zero [EMG] signal” upon subtracting the signals from one another.
Nautilus, Inc. at *4-5 (internal citations omitted).
Markman HearingIn 2011, the District Court conducted a hearing to determine the proper construction of the patent’s claims, see Markman v. Westview Instruments, Inc., 517 U. S. 370 (1996) (claim construction is a matter of law reserved for court decision), including the claim term “in spaced relationship with each other.” According to Biosig, that “spaced relationship” referred to the distance between the live electrode and the common electrode in each electrode pair. Nautilus, seizing on Biosig’s submissions to the PTO during the reexamination, maintained that the “spaced relationship” must be a distance “greater than the width of each electrode.” […] The District Court ultimately construed the term 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,” without any reference to the electrodes’ width. […]
Id. at *6.
Points of AgreementAlthough the parties here disagree on the dispositive question—does the ’753 patent withstand definiteness scrutiny—they are in accord on several aspects of the §112, ¶2 inquiry. First, definiteness is to be evaluated from the perspective of someone skilled in the relevant art. […] Second, in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history. […] Third, “[d]efiniteness is measured from the viewpoint of a person skilled in [the] art at the time the patent was filed.” […]
Nautilus, Inc. at *8-9 (internal citations omitted).
Point of Disagreement: How Much Imprecision Does §112, ¶2 TolerateThe parties differ, however, in their articulations of just how much imprecision §112, ¶2 tolerates. In Nautilus’ view, a patent is invalid when a claim is “ambiguous, such that readers could reasonably interpret the claim’s scope differently.” […] Biosig and the Solici­tor General would require only that the patent provide reasonable notice of the scope of the claimed invention.
Id. at *9 (internal citations omitted).
SCOTUS StandardTo determine the proper office of the definiteness com­mand, therefore, we must reconcile concerns that tug in opposite directions. Cognizant of the competing concerns, we read §112, ¶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 we adopt accords with opinions of this Court stating that “the cer­tainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” […]
Id. at *11 (internal citations omitted).
“Insolubly Ambiguous” May Breed ConfusionIn resolving Nautilus’ definiteness challenge, the Federal Circuit asked whether the ’753 patent’s claims were “amenable to construction” or “insolubly ambiguous.” Those formulations can breed lower court confusion, […] for they 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 pa­ tent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that render­ ing a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” United Carbon, 317 U. S., at 236, against which this Court has warned.
Id. at *11-12.
SCOTUS Refrains from Applying its standard“[M]indful that we are a court of review, not of first view,” Cutter v. Wilkinson, 544 U. S. 709, 718, n. 7 (2005), we decline to apply the standard we have announced to the controversy between Nautilus and Biosig. As we have explained, the Federal Circuit invoked a standard more amorphous than the statutory definiteness requirement allows. We therefore 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. at *14 (some internal citations omitted).
For the reasons stated, we vacate the judgment of the United States Court of Appeals for the Federal Circuit and remand the case for further proceedings consistent with this opinion.
Nautilus, Inc. at *14.

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