June 4, 2014
The U.S. Patent Act requires that a patent specification “conclude with one or more claims particularly pointing out and distinctively claiming the subject matter which the applicant regards as the invention.” In Nautilus, Inc. v. Biosig Instruments, Inc., the U.S. Supreme Court addressed the standard by which claims are to be adjudged for definiteness. Reversing the Court of Appeals for the Federal Circuit, the Court held that a “reasonable certainty” standard is to be applied.
The Nautlius case concerned a patent for a heart rate monitoring device. The patented device operates by measuring the electrical signals accompanying the user’s heartbeat. These signals are known as electrocardiograph (“ECG”) signals. The patent at issue states that electromyogram (“EMG”) signals can cause inaccuracies in measuring the ECG signals. EMG signals are generated by an exerciser’s skeletal muscles when, for example, she moves her arm or grips an exercise monitor with her hand. The patent claim called for a heart rate monitor having an “elongate member” (such as a cylindrical bar). The claim further specified a “live” electrode and a “common” electrode “mounted . . . in spaced relationship with each other.” The claim further specified 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. The purpose of this arrangement was to generate EMG signals “of substantially equal magnitude and phase” that could be subtracted from one another to eliminate the ECG measurement inaccuracies.
The dispute centered on the term “spaced relationship”—how far apart the electrodes must be before they will be deemed to be in a “spaced relationship.” In Markman proceedings, the district court held that “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.” Nautilus then moved for summary judgment, arguing that the term “spaced relationship,” as construed, was indefinite. The district court granted the motion, concluding that the claim language “did not tell [the court] or anyone what precisely the space should be,” nor did it supply “any parameters” for determining the appropriate spacing.
On appeal, the Federal Circuit reversed. The court held that that a claim should be considered indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” The court further held that “[w]hen a ‘word of degree’ is used, the court must determine whether the patent provides ‘some standard for measuring that degree.’” The court determined that the teachings of the patent provided a sufficient standard for illuminating the scope of the disputed term. “For example,” held the court, “on the one hand, the distance between the live electrode and the common electrode cannot be greater than the width of a user’s hands because claim 1 requires the live and common electrodes to independently detect electrical signals at two distinct points of a hand.” “On the other hand,” the court continued, “it is not feasible that the distance between the live and common electrodes be infinitesimally small, effectively merging the live and common electrodes into a single electrode with one detection point.”
Nautilus sought a writ of certiorari. On appeal from the Federal Circuit, the Supreme Court reversed. In place of the “insolubly ambiguous” standard, the Court held 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.” In supporting this conclusion, the Court reasoned that “[i]t cannot be sufficient that a court can ascribe some meaning to a patent’s claim; that definitiveness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post-hoc. To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty.’”
The Court did not resolve the question regarding the validity of the Biosig patent at issue, but rather remanded to the Federal Circuit for consideration of this question in light of the newly annunciated standard. The extent to which the standard announced by the Court differs from the “insolubly ambiguous” standard of the Federal Circuit therefore remains to be seen, both for the Biosig patent and in future cases.
This decision is significant for all parties concerned with patents, but is of particular importance for Fitch Even’s prosecution clients. The Court has continued its focus on drafting precision and on a well-drafted, detailed written description supporting patentability. Nautilus is the latest of many court decisions emphasizing that claims must be skillfully drafted and that patent applications must be written carefully. The decision further emphasizes that patents should be written with an eye toward litigation and a keen, current understanding of the legal principles governing effective patent enforcement.
The decision also is significant for parties who are or may become involved in post-issuance proceedings. The U.S. Patent and Trademark Office is certain to take note of the Nautilus decision, and we expect to see additional challenges to patent definiteness based on the Nautilus standard.
For more information, please contact Fitch Even partner Thomas F. Lebens, the author of this alert.
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