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IP Alert
IP Alert UPDATE: On Remand, Federal Circuit Upholds Biosig’s Claims

May 4, 2015

As reported in an earlier alert, last June the United States Supreme Court issued its opinion in Nautilus, Inc. v. Biosig Instruments, Inc. In that case the Court clarified the standard by which patent claims are to be adjudged for definiteness under 35 U.S.C. 112. In its opinion, the Court rejected the Federal Circuit’s “insolubly ambiguous” standard in favor of a “reasonable certainty” standard. The Court did not resolve the question of whether the particular claims in the Biosig patent, which specified electrodes “mounted . . . in spaced relationship with each other,” met the “reasonable certainty” standard, instead remanding the question to the Federal Circuit Court of Appeals.

Last week, the Federal Circuit issued its opinion in the remanded case. Upon reconsidering Biosig’s claims under the Supreme Court’s “reasonable certainty” standard, the court reaffirmed that Biosig’s patent claims satisfied the definiteness requirement of section 112. 

At the outset, the court observed that under the standard adopted by the Supreme Court, “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 Federal Circuit then observed that other cases that have been decided in the months since the Biosig decision have applied this standard with little difficulty, including DDR Holdings, LLC v. Hotels.com and Interval Licensing LLC v. AOL, Inc. In another case, Freeny v. Apple Inc., Federal Circuit Judge Bryson, sitting by designation in Texas, stated, “Indefiniteness is a legal determination; if the court concludes that a person of ordinary skill in the art, with the aid of the specification, would understand what is claimed, the claim is not indefinite.” The Federal Circuit went on to say, “After listing numerous fact-specific examples, Judge Bryson noted that ‘[c]ontrary to the defendant’s suggestion, [the Nautilus II] standard does not render all of the prior Federal Circuit and district court cases inapplicable’ and ‘all that is required is that the patent apprise [ordinary-skilled artisans] of the scope of the invention.’” The court continued, “As we have stated in the past, ‘[t]he degree of precision necessary for adequate claims is a function of the nature of the subject matter.’” 

Turning to the Biosig patent, the court held that the “claim language, specification, and the figures illustrating the ‘spaced relationship’ between live and common electrodes are telling and provide sufficient clarity to skilled artisans as to the bounds of this disputed term.” The court then observed that the distance between the live electrode and the common electrode cannot be greater than the width of a user’s hands because the claim requires the electrodes to independently detect electrical signals at two distinct points on the hand. However, they pointed out, the distance could not be “infinitesimally small, effectively merging the live and common electrodes into a single electrode with one detection point.” 

Of particular significance was a “whereby” clause in the claim that specified the detection and differentiation of signals between the electrodes. The court held that this “whereby” clause describes a required function of the claims, and observed that the examiner had found this function to be “crucial” as a reason for overcoming the cited prior art. 

As such, the court held that “the recitation of this function in claim 1 is highly relevant to ascertaining the proper bounds of the ‘spaced relationship’ between live and common electrodes,” and that “a skilled artisan could apply a test and determine the ‘spaced relationship’ as pertaining to the function of substantially removing EMG signals.” For this reason, and in light of an inventor declaration, the court held that “a skilled artisan would understand the inherent parameters of the invention. . . . The term ‘spaced relationship’ does not run afoul of ‘the innovation-discouraging “zone of uncertainty” against which [the Supreme Court] has warned,’ and to the contrary, informs a skilled artisan with reasonable certainty of the scope of the claim.”

The Biosig case is significant in that it demonstrates how the Federal Circuit will apply the Supreme Court’s test for indefiniteness. For more information, please contact Thomas F. Lebens, the author of this alert.


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