Nautilus, Inc. v. Biosig Instruments, Inc,
572 U.S. ___ (2014)

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Justia Opinion Summary

A patent specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention,” 35 U.S.C. 112. The 753 patent involves a heart-rate monitor used with exercise equipment; it asserts that prior monitors were often inaccurate in measuring the electrical signals accompanying each heartbeat (ECG signals) because of the presence of other electrical signals generated by the user’s skeletal muscles that can impede ECG signal detection. The invention claims to improve on prior art by detecting and processing ECG signals in a way that filters out the interference. Claim 1 refers to a “heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures.” The claim comprises a cylindrical bar fitted with a display device; electronic circuitry including a difference amplifier; and, on each half of the bar, a “live” electrode and a “common” electrode “mounted ... in spaced relationship with each other.” The exclusive licensee alleged that Nautilus, without obtaining a license, sold exercise machines containing its patented technology. The district court granted Nautilus summary judgment on the ground that the claim term “in spaced relationship with each other” failed the definiteness requirement. The Federal Circuit reversed, concluding that a patent claim passes the threshold so long as the claim is “amenable to construction,” and, as construed, is not “insolubly ambiguous.” The Supreme Court vacated. A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. Section 112’s definiteness requirement must take into account the inherent limitations of language. The standard mandates clarity, while recognizing that absolute precision is unattainable. The Federal Circuit inquired whether the claims were “amenable to construction” or “insolubly ambiguous,” but such formulations lack the precision section 112 demands. 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 remanded so that the Federal Circuit can reconsider, under the proper standard, whether the relevant claims in the 753 patent are sufficiently definite.

NOTE: Where it is feasible, a syllabus (headnote) will be released, as is being done in connection with this case, at the time the opinion is issued.The syllabus constitutes no part of the opinion of the Court but has been prepared by the Reporter of Decisions for the convenience of the reader.See United States v. Detroit Timber & Lumber Co., 200 U. S. 321 .

SUPREME COURT OF THE UNITED STATES

Syllabus

NAUTILUS, INC. v. BIOSIG INSTRUMENTS, INC.

certiorari to the united states court of appeals for the federal circuit

No. 13–369. Argued April 28, 2014—Decided June 2, 2014

The Patent Act requires that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” 35 U. S. C. §112, ¶2. This case concerns the proper reading of the statute’s clarity and precision demand.

          Assigned to respondent Biosig Instruments, Inc., the patent in dispute (the ’753 patent) involves a heart-rate monitor used with exercise equipment. Prior heart-rate monitors, the patent asserts, were often inaccurate in measuring the electrical signals accompanying each heartbeat (electrocardiograph or ECG signals) because of the presence of other electrical signals (electromyogram or EMG signals), generated by the user’s skeletal muscles, that can impede ECG signal detection. The invention claims to improve on prior art by detecting and processing ECG signals in a way that filters out the EMG interference.

          Claim 1 of the ’753 patent, which contains the limitations critical to this dispute, refers to a “heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures.” The claim “comprise[s],” among other elements, a cylindrical bar fitted with a display device; “electronic circuitry including a difference amplifier”; and, on each half of the cylindrical bar, a “live” electrode and a “common” electrode “mounted . . . in spaced relationship with each other.”

          Biosig filed this patent infringement suit, alleging that Nautilus, Inc., without obtaining a license, sold exercise machines containing Biosig’s patented technology. The District Court, after conducting a hearing to determine the proper construction of the patent’s claims, granted Nautilus’ motion for summary judgment on the ground that the claim term “in spaced relationship with each other” failed §112, ¶2’s definiteness requirement. The Federal Circuit reversed and remanded, concluding that a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.” Under that standard, the court determined, the ’753 patent survived indefiniteness review.

Held:

     1. A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention. The parties agree that definiteness is to be evaluated from the perspective of a person skilled in the relevant art, that claims are to be read in light of the patent’s specification and prosecution history, and that definiteness is to be measured as of the time of the patent application. The parties disagree as to how much imprecision §112, ¶2 tolerates.

     Section 112’s definiteness requirement must take into account the inherent limitations of language. See Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722 . On the one hand, some modicum of uncertainty is the “price of ensuring the appropriate incentives for innovation,” id., at 732; and patents are “not addressed to lawyers, or even to the public generally,” but to those skilled in the relevant art, Carnegie Steel Co. v. Cambria Iron Co., 185 U. S. 403 . At the same time, a patent must be precise enough to afford clear notice of what is claimed, thereby “ ‘appris[ing] the public of what is still open to them,’ ” Markman v. Westview Instruments, Inc., 517 U. S. 370 , in a manner that avoids “[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims,” United Carbon Co. v. Binney & Smith Co., 317 U. S. 228 . The standard adopted here mandates clarity, while recognizing that absolute precision is unattainable. It also accords with opinions of this Court stating that “the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” Minerals Separation, Ltd. v. Hyde, 242 U. S. 261 . Pp. 8–11.

     2. The Federal Circuit’s standard, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. The Court of Appeals inquired whether the ’753 patent’s claims were “amenable to construction” or “insolubly ambiguous,” but such formulations lack the precision §112, ¶2 demands. 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,” United Carbon, 317 U. S., at 236, against which this Court has warned. While some of the Federal Circuit’s fuller explications of the term “insolubly ambiguous” may come closer to tracking the statutory prescription, this Court must ensure that the Federal Circuit’s test is at least “probative of the essential inquiry.” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U. S. 17 . The expressions “insolubly ambiguous” and “amenable to construction,” which permeate the Federal Circuit’s recent decisions concerning §112, ¶2, fall short in this regard and can leave courts and the patent bar at sea without a reliable compass. Pp. 11–13.

     3. This Court, as “a court of review, not of first view,” Cutter v. Wilkinson, 544 U. S. 709 , n. 7, follows its ordinary practice of remanding so that the Federal Circuit can reconsider, under the proper standard, whether the relevant claims in the ’753 patent are sufficiently definite, see, e.g., Johnson v. California, 543 U. S. 499 . Pp. 13–14.

715 F. 3d 891, vacated and remanded.

     Ginsburg, J., delivered the opinion for a unanimous Court.

Primary Holding

A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention; however, the definiteness requirement must take into account the inherent limitations of language.

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