Supreme Court to Address Claim Definiteness in Nautilus, Inc. v. BioSig Instruments, Inc.

January 16, 2014

By: N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

Important Issues:

  • Are issued claims invalid for failing to meet the statutory requirement of distinct claiming only when the claims are "not amenable to construction" or "insolubly ambiguous"?
  • Is the "presumption of validity" of patent claims at stake?

The Supreme Court has granted a petition for a writ of certiorari in the case of Nautilus, Inc. v. Biosig Instruments, Inc.  At issue before the Supreme Court are: 1) whether the Federal Circuit's threshold, of finding statutory indefiniteness only when claims are "not amenable to construction" or "insolubly ambiguous," defeats 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 that same requirement.
 
The case before the Supreme Court is an appeal from a decision by the Court of Appeals for the Federal Circuit [Biosig Instruments v. Nautilus, Inc., 715 F.3d 891 (Fed. Cir. 2013)], that reversed a lower court holding of invalidity for failure to meet a statutory requirement of "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."  (pre-America Invents Act)  The patent at issue, U.S. 5,337,753, is directed to a heart rate monitor, employed in exercise apparatus, that filters out extraneous electromyographic (EMG) signals from electrical signals generated by the heart, known as electrocardiograph (ECG) signals.
 
The claim language at the center of the controversy is the phrase "spaced relationship" in claim 1 of the issued patent.  The phrase at issue has been subject to multiple interpretations during ex parte re-examination proceedings at the United States Patent and Trademark Office, at the trial before the United States District Court for the Southern District of New York and, finally, before the Federal Circuit.  No definition for the phrase was provided in the specification of the patent, and the Patent Office, the District Court and the Federal Circuit arrived at conflicting interpretations, leading to differences in claim scope and contradictory conclusions regarding infringement by the defendant, Nautilus, at trial and on appeal.  The Federal Circuit, relying on established precedent, decided the scope of claim coverage as a matter of law without deference to the holding of the District Court, which had invalidated the claims as lacking definiteness.  The Supreme Court is expected to address whether the Federal Circuit, by observing a presumption of validity of issued claims, has impermissibly lowered the statutory threshold of acceptable claim definiteness.

This case also will likely affect an existing discrepancy among standards applied by the Patent Office and the Federal Circuit to determine whether claim language is impermissibly indefinite. Under Patent Office procedure, a patent examiner "should allow claims which define the patentable subject matter with a reasonable degree of particularity and distinctness," and reject claims under 35 U.S.C. §112, Paragraph 2, if "the language of a claim... is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation...."  Thus, as 35 U.S.C. §112, Paragraph 2 is interpreted by the Patent Office, a claim is indefinite if there is more than one reasonable interpretation.  That standard differs from the standard under which the Federal Circuit operates.  Specifically, the Federal Circuit will only find an issued claim invalid for indefiniteness when "reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim," thereby rendering the claim "insolubly ambiguous and invalid from indefiniteness." 
 
There are also other, broader implications that might be addressed by the Supreme Court in this case, at least peripherally.  For example, the Federal Circuit in Cybor Corp. v. FAS Techs., Inc. interpreted an earlier decision by the Supreme Court, Markman v. Westview Instruments, Inc., to mean that claim construction is a matter of law, which courts of appeal, such as the Federal Circuit, may decide without deference to findings of the lower courts.  There has been significant controversy regarding whether, in fact, the Supreme Court actually held in Markman that questions of claim construction are matters of law, or instead simply held that judges are better suited to construing claims as a matter of "exegesis," thereby leaving open the question of the standard for review in claim construction on appeal. 
 
A decision by the Supreme Court is expected later this year.

PDF FileView as PDF

About

January 16, 2014

By: N. Scott Pierce

Hamilton Brook Smith Reynolds Alert

Important Issues:

  • Are issued claims invalid for failing to meet the statutory requirement of distinct claiming only when the claims are "not amenable to construction" or "insolubly ambiguous"?
  • Is the "presumption of validity" of patent claims at stake?

The Supreme Court has granted a petition for a writ of certiorari in the case of Nautilus, Inc. v. Biosig Instruments, Inc.  At issue before the Supreme Court are: 1) whether the Federal Circuit's threshold, of finding statutory indefiniteness only when claims are "not amenable to construction" or "insolubly ambiguous," defeats 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 that same requirement.
 
The case before the Supreme Court is an appeal from a decision by the Court of Appeals for the Federal Circuit [Biosig Instruments v. Nautilus, Inc., 715 F.3d 891 (Fed. Cir. 2013)], that reversed a lower court holding of invalidity for failure to meet a statutory requirement of "particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention."  (pre-America Invents Act)  The patent at issue, U.S. 5,337,753, is directed to a heart rate monitor, employed in exercise apparatus, that filters out extraneous electromyographic (EMG) signals from electrical signals generated by the heart, known as electrocardiograph (ECG) signals.
 
The claim language at the center of the controversy is the phrase "spaced relationship" in claim 1 of the issued patent.  The phrase at issue has been subject to multiple interpretations during ex parte re-examination proceedings at the United States Patent and Trademark Office, at the trial before the United States District Court for the Southern District of New York and, finally, before the Federal Circuit.  No definition for the phrase was provided in the specification of the patent, and the Patent Office, the District Court and the Federal Circuit arrived at conflicting interpretations, leading to differences in claim scope and contradictory conclusions regarding infringement by the defendant, Nautilus, at trial and on appeal.  The Federal Circuit, relying on established precedent, decided the scope of claim coverage as a matter of law without deference to the holding of the District Court, which had invalidated the claims as lacking definiteness.  The Supreme Court is expected to address whether the Federal Circuit, by observing a presumption of validity of issued claims, has impermissibly lowered the statutory threshold of acceptable claim definiteness.

This case also will likely affect an existing discrepancy among standards applied by the Patent Office and the Federal Circuit to determine whether claim language is impermissibly indefinite. Under Patent Office procedure, a patent examiner "should allow claims which define the patentable subject matter with a reasonable degree of particularity and distinctness," and reject claims under 35 U.S.C. §112, Paragraph 2, if "the language of a claim... is such that a person of ordinary skill in the relevant art would read it with more than one reasonable interpretation...."  Thus, as 35 U.S.C. §112, Paragraph 2 is interpreted by the Patent Office, a claim is indefinite if there is more than one reasonable interpretation.  That standard differs from the standard under which the Federal Circuit operates.  Specifically, the Federal Circuit will only find an issued claim invalid for indefiniteness when "reasonable efforts at claim construction result in a definition that does not provide sufficient particularity and clarity to inform skilled artisans of the bounds of the claim," thereby rendering the claim "insolubly ambiguous and invalid from indefiniteness." 
 
There are also other, broader implications that might be addressed by the Supreme Court in this case, at least peripherally.  For example, the Federal Circuit in Cybor Corp. v. FAS Techs., Inc. interpreted an earlier decision by the Supreme Court, Markman v. Westview Instruments, Inc., to mean that claim construction is a matter of law, which courts of appeal, such as the Federal Circuit, may decide without deference to findings of the lower courts.  There has been significant controversy regarding whether, in fact, the Supreme Court actually held in Markman that questions of claim construction are matters of law, or instead simply held that judges are better suited to construing claims as a matter of "exegesis," thereby leaving open the question of the standard for review in claim construction on appeal. 
 
A decision by the Supreme Court is expected later this year.

PDF FileView as PDF

Back to the Top