Nautilus, Inc. v. Biosig Instruments, Inc. - Oral Argument - April 28, 2014

Nautilus, Inc. v. Biosig Instruments, Inc.

Media for Nautilus, Inc. v. Biosig Instruments, Inc.

Audio Transcription for Opinion Announcement - June 02, 2014 in Nautilus, Inc. v. Biosig Instruments, Inc.

Audio Transcription for Oral Argument - April 28, 2014 in Nautilus, Inc. v. Biosig Instruments, Inc.

John G. Roberts, Jr.:

We'll hear argument first this morning in Case 13-369, Nautilus v. Biosig Instruments.

Mr. Vandenberg.

Mr. Chief Justice, and may it please the Court.

The Patent Act requires particular and distinct claims, but the claim in this case is not particular and distinct.

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.

Ruth Bader Ginsburg:

Why is this claim ambiguous?

It's evident that these electrodes have to be close enough so that the user's hand contacts both electrodes, but separate enough to heap -- keep electrodes distinct.

Why isn't that sufficiently definite?

Your Honor, if -- if that were the only reasonable construction, then that may suffice.

However, here, the other reasonable construction is that the spaced relationship is a special spacing that causes the electrodes to achieve the desired result.

And that was the construction that the majority found at the Federal circuit, namely, that spaced relationship is not what it sounds like, namely, any spacing, but rather is a special spacing that is derived by trial-and-error testing to get the spacing just right so that the electrodes detect--

Sonia Sotomayor:

I don't think the majority or the -- or the concurrence or the other side disagreed with that.

The only question was whether it was part of the specifications or not.

I thought that was the only difference between them.

They both agreed ultimately that the electrodes had to cancel out -- was it the EMGs?

--Correct.

Sonia Sotomayor:

So they both agreed that that was part of the scope.

The only issue was, was it part of the specifications or part of the claims.

But both of them make up the scope of the patent.

Your Honor, we would submit that the disagreements between the judges and, in fact, between Biosig itself went to the scope of the claim, namely, does the scope of the claim cover all ways of achieving the desired result no matter how the electrodes are spaced.

That's one possible reading.

The other possible reading is that the claims cover only a special spacing of the electrodes to achieve the desired result.

And why that matters is if you think of the inventor in 1994 who invents a new material for electrodes, and this new material achieves the desired result of detecting equal muscle signals on the left and right side, regardless of the spacing of the electrode.

So it doesn't matter where you put the electrodes, as long as you can touch them, this new material achieved the -- the desired goal.

That inventor would not know in 1994 if they infringed or not, because if the claims had the interpretation that the majority eventually gave them, namely, that the spaced relationship has this functional limitation and it must be the result of this trial-and-error balancing, there'd be no infringement.

But if spaced relationship meant any spacing, then there would be infringement.

So that is the exact type of zone of uncertainty that United Carbon warned against and which deters the innovation.