Nautilus, Inc. v. Biosig Instruments, Inc.

PETITIONER: Nautilus, Inc.
RESPONDENT: Biosig Instruments, Inc.
LOCATION: Nautilus, Inc. Global Headquarters

DOCKET NO.: 13-369
DECIDED BY: Roberts Court (2010-2016)
LOWER COURT:

CITATION: 572 US (2014)
GRANTED: Jan 10, 2014
ARGUED: Apr 28, 2014
DECIDED: Jun 02, 2014

Facts of the case

Biosig Instruments, Inc. (Biosig) holds the '753 Patent, which refers to a heart rate monitor associated with exercise equipment and procedures. Biosig sued Nautilus, Inc. (Nautilus) in federal district court and alleged that Nautilus infringed on several claims of the patent. Nautilus moved for summary judgment on two issues: whether there was infringement, and whether the patent was invalid due to its vagueness. The district court denied Nautilus' motion as far as the issue of infringement due to lack of discovery and granted the motion as it related to the patent's invalidity because of its vagueness. Biosig appealed and the U.S. Court of Appeals for the Federal Circuit reversed. The Court of Appeals held that a patent claim could only be considered legally indefinite when it is "insolubly ambiguous," or not possible for a person of ordinary skill in the area to understand and resolve.

Question

(1) Does the U.S. Court of Appeals for the Federal Circuit's standard of whether a patent claim is "insolubly ambiguous" defeat the purpose of the statutory requirement for patents to be particular and distinct?

(2) Does the presumption of patent validity dilute the statutory requirement for patents to be particular and distinct?

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

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

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

Justice Ginsburg has our opinion this morning in Case 13-369, Nautilus, Inc., v. Biosig Instruments.

The Patent Act in Section 112 Paragraph 2 requires that a patent specification conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.

This case concerns the proper reading of the statute's demand for clarity and precision.

Respondent Biosig Instruments is the holder by assignment of the patent in dispute, the 753 patent.

That patent is on a heart rate monitor used with exercised equipment.

Prior heart rate monitors the patent asserts were often inaccurate in measuring the electrical signals accompanying each heartbeat known as electrocardiograph or ECG signals.

The problem -- problem was caused by the presence of other electrical signals referred to as electromyogram or EMG signals.

EMG signals which are generated by that uses skeletal muscles can impede ECG signal detection.

The invention described in the 753 patent claims to improve on prior art by detecting and processing ECG signals in a way that filters out the EMG impediment.

Claim 1 of the 753 patent which contains the limitation critical to this dispute describes a heart rate monitor for use when exercising.

The claim lists among other elements a cylindrical bar fitted with a display device.

And on each half of that bar, a live electrode and a common electrode mounted in space -- in -- in spaced relationship with each other.

Biosig filed this patent infringement suit alleging that petitioner Nautilus, without obtaining a license, sold exercise machines containing Biosig's patented technology.

The District Court after construing the patent's claims granted Nautilus' motion for summary judgment on the ground that the claimed term in spaced relationship with one another failed Section 112 Paragraph 2's definiteness requirement.

The Federal Circuit reversed and remanded concluding that a patent claim passes the Section 112 Paragraph 2 threshold, so long as the claim is amenable to construction and the claim as construed is not insolubly ambiguous.

Under that standard, the Appeals Court determined the 753 patent survived indefiniteness review.

The parties arguing in the Court on several aspects of the Section 112 Paragraph 2 inquiry.

They agree that definiteness is to be evaluated from the perspective of a person skilled in the relevant art that claims are to be read in light of the patent specification and prosecution history, and that definiteness is to be measured as of the time of the patent application.

The parties differ however as to the degree of imprecision Section 112 Paragraph 2 tolerates.

A patent is invalid for indefiniteness we hold if its claims read in light of the patent's specification and prosecution history failed to inform those skilled in the art about the scope of the invention with reasonable certainty.

Section 112's definiteness requirement, we accept, must take into account the inherent limitations of language as well as the reality that patents are technical documents granted to be understood by persons skilled in the relevant art.

At the same time, a patent must be precise enough to provide clear notice of what is claimed and of the terrain left open for further experimentation requiring reasonable certainty in claim scope, the standard we adopt falls for clarity while recognizing that absolute precision is unattainable.

The Federal Circuit standard which tolerates some ambiguous claims, but not others does not satisfy the statutes definiteness requirement.

The Court of Appeals inquired whether the 753 patent's claims were amenable to construction or insolubly ambiguous.

But those formulations lack the precision Section 112 Paragraph 2 demands, as our opinion explains the insolubly ambiguous criterion can leave District Courts and the Patent Bar at sea without a reliable compass.

The Court, we have often said is a Court of review, not of first view, accordingly we do not pass on the validity of the patent in suit.

Rather, having held that the insolubly ambiguous standard is insufficiently exacting, we vacate the Federal Circuit's judgment and remand for that Court's reconsideration whether the relevant claims in the 753 patent are sufficiently definite under the reasonable certainty standard we have articulated.

The Court's decision is unanimous.