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Nautilus, Inc. v. Biosig Instruments, Inc.

Supreme Court of the United States
572 U.S. ____ (2014) (2014)
ELI5:

Rule of Law:

Under 35 U.S.C. § 112, ¶ 2, a patent is invalid for indefiniteness if its claims, read in light of the specification and prosecution history, fail to inform those skilled in the relevant art about the scope of the invention with reasonable certainty.


Facts:

  • Dr. Gregory Lekhtman invented and patented a heart-rate monitor for use with exercise equipment, which was assigned to Biosig Instruments, Inc.
  • The monitor was designed to improve accuracy by filtering out interfering electrical signals from skeletal muscles (EMG signals).
  • The patented device consists of a cylindrical bar with two pairs of electrodes that a user grips.
  • A key claim in the patent described the electrodes as being mounted in 'spaced relationship with each other' but did not specify the exact distance or range of distances.
  • Biosig allegedly disclosed this technology to StairMaster Sports Medical Products, Inc., which began selling exercise machines with the technology without a license.
  • Nautilus, Inc. acquired the StairMaster brand and continued to sell the allegedly infringing machines.

Procedural Posture:

  • Biosig Instruments, Inc. (plaintiff) sued Nautilus, Inc. (defendant) in the U.S. District Court for the Southern District of New York for patent infringement.
  • Nautilus requested reexamination by the U.S. Patent and Trademark Office, which confirmed the patent's validity.
  • The infringement suit was reinstituted, and the District Court held a claim construction hearing for the term 'spaced relationship.'
  • Nautilus moved for summary judgment, arguing the claim was indefinite, and the District Court granted the motion, invalidating the claim.
  • Biosig (appellant) appealed to the U.S. Court of Appeals for the Federal Circuit.
  • The Federal Circuit (intermediate appellate court) reversed, holding that the claim was not 'insolubly ambiguous' and thus was not indefinite.
  • Nautilus (petitioner) was granted a writ of certiorari by the U.S. Supreme Court.

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Issue:

Does the Federal Circuit's standard, which holds a patent claim indefinite only if it is 'insolubly ambiguous,' satisfy the statutory requirement of 35 U.S.C. § 112, ¶ 2 that claims 'particularly point[] out and distinctly claim[]' the invention?


Opinions:

Majority - Justice Ginsburg

No. The Federal Circuit's 'insolubly ambiguous' standard does not satisfy the statute's definiteness requirement. Instead, a patent's claims are invalid for indefiniteness if they fail to inform a person skilled in the art about the scope of the invention with reasonable certainty. The patent system requires clear notice of what is claimed to apprise the public of what is still open to them and to prevent a 'zone of uncertainty' that discourages innovation. The 'insolubly ambiguous' standard is too permissive, as it allows a claim to survive as long as a court can assign some meaning to it, which undermines the public-notice function of patents. The proper inquiry must evaluate whether the claims, specification, and prosecution history provide objective boundaries to a person skilled in the art at the time the patent was filed. The Court vacates the Federal Circuit's decision and remands for reconsideration under this new, more stringent 'reasonable certainty' standard.



Analysis:

This decision significantly heightened the standard for patent claim definiteness, rejecting the Federal Circuit's long-standing, permissive 'insolubly ambiguous' test. By instituting the 'reasonable certainty' standard, the Supreme Court aimed to curb the use of vaguely worded patents that create uncertainty and can be leveraged in infringement litigation. The ruling requires patent drafters to be more precise, thereby providing clearer notice to competitors about the boundaries of patented technology. Consequently, this gives alleged infringers a stronger basis to challenge the validity of ambiguous claims, potentially reducing the power of so-called 'patent trolls' and promoting clearer, higher-quality patents.

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