High-Impact Case to be Litigated Before the United States Supreme Court Later this Month
By: Pamela Rivera
Patent claims delineate the borders between those exclusive rights afforded to the inventor for his or her ingenuity and the room left for others to promote innovation. On January 10, 2014, the Supreme Court granted certiorari in Nautilus, Inc. v. Biosig Instruments, Inc., to determine the proper standard for finding patent claims indefinite pursuant 35 U.S.C. § 112, ¶ 2. At issue before the Supreme Court are: (1) whether the Federal Circuit’s interpretation of 35 U.S.C. § 112, ¶ 2 is consistent with the statutory requirement of particular and distinct patent claiming, and (2) whether the presumption of validity afforded by the Federal Circuit to issued patent claims dilutes the same requirement.
In 2004, Biosig sued Nautilus, Inc. (hereinafter “Nautilus”) in the United States District Court for the Southern District of New York alleging infringement on several claims of the ‘753 patent. After two re-examination attempts and a claim construction ruling, Nautilus moved for summary judgment on two issues: (1) whether there was infringement, and (2) whether the patent claims were invalid due to indefiniteness. The district court denied Nautilus’ motion on the infringement claim due to lack of discovery and granted the motion on the patent invalidity, holding that the ‘753 patent was indefinite under 35 U.S.C. § 112 ¶ 2 as a matter of law. Biosig appealed. On April 26, 2013, the U.S. Court of Appeals for the Federal Circuit (Newman, Schall, Wallach) reversed and remanded the district court’s summary judgment. Nautilus petitioned for a writ of certiorari with the U.S. Supreme Court.
The claims at issue in Nautilus, U.S. Patent No. 5,337,753, are directed to a heart rate monitor, generally employed by exercise equipment that filters out extraneous electromyographic (EMG) signals from electrical signals generated by the heart, known as electrocardiograph (ECG) signals. The claims disclose a hand grip bar with two electrodes mounted in a “spaced relationship” with each other.
The current state of patent law on the definiteness requirement often leaves practitioners and district courts with a heightened sense of uncertainty when litigating and deciding, whether a claim in an issued patent satisfies this requirement. The patent statute dictates, “[t]he specification 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.” 35 U.S.C. §112, ¶ 2.
The Federal Circuit has articulated the legal standard in a plethora of ways, making it nearly impossible to invalidate claims for indefiniteness. Supreme Court jurisprudence has recognized, “[i]t has long been understood that a patent must describe the exact scope of an invention.” Markman v. Westview Instruments, Inc., 517 U.S. 370, 373 (1996). Furthermore, the Supreme Court has further recognized that this “definiteness” requirement is considered to have been met only when the claims of the patent “clearly distinguish” what is claimed from the prior art and “clearly circumscribe what is foreclosed from future enterprise.” United Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236 (1942). The Federal Circuit has moved away from this standard and taken a position that the determination of whether a claim meets the definiteness requirement is based on whether those terms can be given a reasonable meaning. The Federal Circuit has stated that a claim is indefinite only when it is “not amenable to construction” or “insolubly ambiguous.” Damatize, LLC v. Plumtree Sogftware, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005). These divergent approaches leave district courts and patent practitioners directionless in trying to determine whether patent claims satisfy the statutory definiteness requirement.
The Supreme Court decision in Nautilus, Inc. v. Biosig Instruments, Inc., could have major implications for future patent litigants. If the Supreme Court rejects the standard set forth by the Federal Circuit for proving indefiniteness, many patents will be more susceptible to earlier invalidity challenges at the claim construction stage. Also, the decision could potentially change the way in which patent claim terms and specifications are drafted.
A decision is expected after the Supreme Court hears the arguments later this month.