Supreme Court “Exercises” its Muscle on Patent Clarity – Nautilus, Inc. v. Biosig Instruments, Inc.
Last week I shared my thoughts on Limelight Networks, Inc. v. Akamai Tech. Inc., one of the two unanimous Supreme Court patent decisions handed down earlier that week. See, Supreme Court Decides Two More High-Profile Cases on Same Day. In this piece I now discuss the other decision, Nautilus, Inc. v. Biosig Instruments, Inc.
In Nautilus, the Court deals with the complex question of patent claim construction and scope in view of the standard for definiteness (in layman’s terms, whether the patent claim is clearly written and defined in the patent disclosure). The governing statute here is the second paragraph of 35 USC § 112 (“definiteness”), which states that a patent “shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention”. If a patent fails to meet this requirement, the claims can be found invalid for being “indefinite”.
As background, Biosig is the owner of US Patent No. 5,337,753, relating to a heart rate monitor for use on exercise equipment. The Biosig invention claims to be an improvement over earlier monitors by filtering out confounding electrical signals from the user’s skeletal muscles. Biosig filed suit against Nautilus, claiming that their StairMaster exercise machines infringe the ‘753 patent. At issue was the meaning of the term “spaced relationship” with respect to the electrodes of the heart rate monitor. Without going into the details of the District Court suit – as well as an intervening reexamination proceeding – the Court found in favor of Nautilus. The Federal Circuit reversed and remanded, holding that the definiteness requirement is met so long as the claim is “amenable to construction” and not “insolubly ambiguous”. The Supreme Court granted review.
In the opinion authored by Justice Ruth Ginsburg, the Supreme Court rejected the Federal Circuit’s standard of “amenable to construction” and not “insolubly ambiguous” and replaced it with a new pumped up standard. Under this new standard, “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 key phrase now going forward for claim interpretation is “reasonable certainty”.
The general reaction from the patent bar, which also echoes my view, is that the threshold has now been raised for the definiteness standard. However, this higher standard, as was the case with the previous standard, will still be evaluated in view of one skilled in the art and in view of the prosecution history of the patent. Even though the Supreme Court set this new “reasonable certainty” standard, it apparently did not have the energy reserves to actually apply it. Instead, the Court took an early break from its exercise regimen and remanded the case back to the Federal Circuit to determine whether the ‘753 patent claims have sufficient muscle to withstand this tougher test.
– Anthony D. Sabatelli, PhD, JD
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