Nautilus vs. Biosig: A Bright Star to Sail By?
A few weeks ago, the Federal Circuit Court of Appeals released its decision in Biosig v. Nautilus, (Fed. Cir. 2015) on remand from the U.S. Supreme Court, Nautilus v. Biosig, 134 S. Ct. 2120 (2014) which instructed the Federal Ciruit to reconsider whether the claims of the patent in suit were sufficiently clear to meet the requirements of 35 USC 112. The Federal Circuit had already reviewed those claims and found them to valid under that court’s prevailing formulation for clarity: the claims in question were neither “insolubly ambiguous” nor “not amenable to construction.” Biosig Instruments, Inc. v. Nautilus, Inc., 715 F. 3d 891 (Fed. Cir. 2013), but was required to review the claims once again under the new “reasonable certainty” standard.
The validity of the Federal Circuit’s “insolubly ambiguous” test came before the Supreme Court from a patent dispute over a heart rate monitor device (EKG’s). The inventor of the patent in suit, Gregory Lekhtman, found a solution to a problem that plagued conventional EKG devices, which was that the heart signals (ECG signals), which are picked up by electrodes e applied to the person’s body, are subject to interference by signals from skeletal muscle (EMG signals) elsewhere in the body. Lekhtman’s invention provides a solution by specifically sensing the interfering signals by means of electrodes applied to the person’s hands and feeding the signals both from the person’s heart from the skeletal muscles to a processor that can subtract out the interference. A device to accomplish this is illustrated in Fig. 1 of the Lekhtman patent, United States Patent No. 5,337,753.
Figure 1 shows a cylinder 3 that carries a pair of electrodes 9 and 11 on the left side and a second pair of electrodes 13 and 15 on the right side. As suggested by the hands depicted in the drawing in dashed lines, the paired electrodes are positioned on the cylinder so that a person can grab the cylinder with the hands and each hand will be in contact with a pair of electrodes. The patent claims the illustrated device, and states that the electrodes for the hands are in “spaced relationship” with each other, and included functional language to say that a user’s hands are placed on the device to make contact with the electrodes so that signals can be obtained.
Biosig sued Nautilus for infringement of the Lekhtman patent, and Nautilus defended by arguing, in part, that the “spaced relationship” language rendered the claim indefinite under 35 USC 112, and won Summary Judgement of Invalidity on this point at trial.
The Federal Circuit, applying its standard test for indefinites, reversed the trial court’s judgement of invalidity. Looking to evidence intrinsic to the patent – the claims themselves, the specification, and an affidavit submitted during prosecution, the Federal Circuit found that “spaced relationship” to mean that the electrodes were not so close as to be effectively touching, and not farther apart than the width of a person’s hand, and would not conclude that the phrase “spaced relationship” left the claim insolubly ambiguous or not amenable to construction.
Nautilus appealed to the Supreme Court, challenging the validity of the “insolubly ambiguous” test used by the Federal Circuit.
Justice Ginsberg, writing for the Court, found that as a rubric for analyzing the adequacy of patent claims, the Federal Circuit’s “insolubly ambiguous or not amenable to construction” test left the patent bar “at sea without a reliable compass,” and instructed the Federal Circuit to adopt a new test: To meet the requirements of 35 USC 112 paragraph 2 (pre-AIA) or 112(b) (post-AIA), a claim must inform the reader of the scope of the invention with “reasonable certainty.”
On remand, the Federal Circuit again upheld the claims in question, under the new test.
On its face, the change from a test of “insolubly ambiguous or not amenable to construction” to “reasonable certainty” sounds like a big improvement in clarity and like the implementation of a higher standard. In practice, maybe not so much.
The Supreme Court required that the “reasonable certainty” standard be applied from the perspective of someone skilled in the relevant art, reading the claims in light of the patent’s specification and prosecution history, and from the viewpoint of a skilled artisan as of the time the patent was filed. In addition, the Court acknowledged that Section 112 entails a ‘delicate balance’ given the inherent limitations of language, recognizing that absolute precision is unattainable and that some modicum of uncertainty is permissible as the price of rewarding innovation. All of these caveats were built into the “insolubly ambiguous or not amenable to construction” test as well, so the new test is not so different from the old.
Following after the Supreme Court’s ruling, the Federal Circuit applied the “reasonable certainty” standard in two other cases, in which it stated that it did not take the Supreme Court’s new rule to say that the use of a term of degree in a patent claim would necessarily render the claim indefinite. See Interval Licensing LLC v. AOL, Inc., 112 USPQ2d 1188 (Fed. Cir. 2014) (allowing for use of terms of degree but finding “unobtrusive” as a claim limitation to be so subjective that the claim was indefinite), and DDR Holdings, LLC v. Hotels.com, LP, 113 USPQ2d 1097 (Fed. Cir. 2014)(finding “look and feel” in reference to a web page to be sufficiently clear).
When the Federal Circuit reviewed its ruling in Biosig on remand, Judge Wallach commented that “we may now steer by the bright star of “reasonable certainty” rather that the unreliable compass of “insolubly ambiguity”. Given the similarity of the conditions applicable to the new test with those of the old, it remains to be seen how bright that star will prove to be.
– Fred Spaeth
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