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SUPREME COURT OF THE UNITED STATES
_________________
No. 13–369
_________________
NAUTILUS, INC., PETITIONER v. BIOSIG
INSTRUMENTS, INC.
on writ of certiorari to the united states
court of appeals for the federal circuit
[June 2, 2014]
Justice Ginsburg
delivered the opinion of the Court.
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 (2006 ed.) (emphasis added).
This case, involving a heart-rate monitor used with exercise
equipment, concerns the proper reading of the statute’s
clarity and precision demand. According to the Federal Circuit, 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.” 715 F. 3d
891, 898–899 (2013). We conclude that the Federal
Circuit’s formulation, which tolerates some ambiguous claims
but not others, does not satisfy the statute’s definiteness
requirement. In place of the “insolubly ambiguous”
standard, we hold that 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. Expressing no opinion on the validity of the
patent-in-suit,
we remand, instructing the Federal Circuit to
decide the case employing the standard we have prescribed.
I
Authorized by the
Constitution “[t]o promote the Progress of Science and useful
Arts, by securing for limited Times to . . . Inventors
the exclusive Right to their . . . Discoveries,”
Art. I, §8, cl. 8, Congress has enacted patent laws
rewarding inventors with a limited monopoly. “Th[at] monopoly
is a property right,” and “like any property right, its
boundaries should be clear.” Festo Corp. v. Shoketsu Kinzoku
Kogyo Kabushiki Co., 535 U. S. 722, 730 (2002) . See also
Markman v. Westview Instruments, Inc., 517 U. S. 370, 373
(1996) (“It has long been understood that a patent must
describe the exact scope of an invention and its manufacture
. . . .”). Thus, when Congress enacted the
first Patent Act in 1790, it directed that patent grantees file a
written specification “containing a description
. . . of the thing or things . . . invented or
discovered,” which “shall be so particular” as to
“distinguish the invention or discovery from other things
before known and used.” Act of Apr. 10, 1790, §2, 1Stat.
110.
The patent laws have
retained this requirement of definiteness even as the focus of
patent construction has shifted. Under early patent practice in the
United States, we have recounted, it was the written specification
that “represented the key to the patent.” Markman, 517
U. S., at 379. Eventually, however, patent applicants began to
set out the invention’s scope in a separate section known as
the “claim.” See generally 1 R. Moy, Walker on Patents
§4.2, pp. 4–17 to 4–20 (4th ed. 2012). The
Patent Act of 1870 expressly conditioned the receipt of a patent on
the inventor’s inclusion of one or more such claims,
described with particularity and distinctness. See Act of July 8,
1870, §26, 16Stat. 201 (to obtain a patent, the inventor must
“particularly point out and distinctly claim the part,
improvement, or combination which [the inventor] claims as his
invention or discovery”).
The 1870 Act’s
definiteness requirement survives today, largely unaltered. Section
112 of the Patent Act of 1952, applicable to this case, requires
the patent applicant to conclude the specification with “one
or more claims particularly pointing out and distinctly claiming
the subject matter which the applicant regards as his
invention.” 35 U. S. C. §112, ¶2 (2006
ed.). A lack of definiteness renders invalid “the patent or
any claim in suit.” §282, ¶2(3).[
1]
II
A
The patent in
dispute, U. S. Patent No. 5,337,753 (’753 patent),
issued to Dr. Gregory Lekhtman in 1994 and assigned to respondent
Biosig Instruments, Inc., concerns a heart-rate monitor for use
during exercise. Previous heart-rate monitors, the patent asserts,
were often inaccurate in measuring the electrical signals
accompanying each heartbeat (electrocardiograph or ECG signals).
The inaccuracy was caused by electrical signals of a different
sort, known as electromyogram or EMG signals, generated by an
exerciser’s skeletal muscles when, for example, she moves her
arm, or grips an exercise monitor with her hand. These EMG signals
can “mask” ECG signals and thereby impede their
detection. App. 52, 147.
Dr. Lekhtman’s
invention claims to improve on prior art by eliminating that
impediment. The invention focuses on a key difference between EMG
and ECG waveforms: while ECG signals detected from a user’s
left hand have a polarity opposite to that of the signals detected
from her right hand,[
2] EMG
signals from each hand have the same polar-ity. The patented device
works by measuring equalized EMG signals detected at each hand and
then using circuitry to subtract the identical EMG signals from
each other, thus filtering out the EMG interference.
As relevant here, the
’753 patent describes a heart-rate monitor contained in a
hollow cylindrical bar that a user grips with both hands, such that
each hand comes into contact with two electrodes, one
“live” and one “common.” The device is
illustrated in figure 1 of the patent, id., at 41, reproduced in
the Appendix to this opinion.
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.” Id., at 61. The claim “comprise[s],”
among other elements, an “elongate member” (cylindrical
bar) 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.”
Ibid.[
3] The claim sets forth
additional elements, including that the cylindrical bar is to be
held in such a way that each of the user’s hands
“contact[s]” both electrodes on each side of the bar.
Id., at 62. Further, the EMG signals detected by the two electrode
pairs are to be “of substan-tially equal magnitude and
phase” so that the difference amplifier will “produce a
substantially zero [EMG] signal” upon subtracting the signals
from one another. Ibid.
B
The dispute between
the parties arose in the 1990’s, when Biosig allegedly
disclosed the patented technology to StairMaster Sports Medical
Products, Inc. According to Biosig, StairMaster, without ever
obtaining a license, sold exercise machines that included
Biosig’s patented technology, and petitioner Nautilus, Inc.,
continued to do so after acquiring the StairMaster brand. In 2004,
based on these allegations, Biosig brought a patent infringement
suit against Nautilus in the U. S. District Court for the
Southern District of New York.
With Biosig’s
lawsuit launched, Nautilus asked the U. S. Patent and
Trademark Office (PTO) to reexamine the ’753 patent. The
reexamination proceedings centered on whether the patent was
anticipated or rendered obvious by prior art—principally, a
patent issued in 1984 to an inventor named Fujisaki, which
similarly disclosed a heart-rate monitor using two pairs of
electrodes and a difference amplifier. Endeavoring to distinguish
the ’753 patent from prior art, Biosig submitted a
declaration from Dr. Lekhtman. The declaration attested, among
other things, that the ’753 patent sufficiently informed a
person skilled in the art how to configure the detecting electrodes
so as “to produce equal EMG [signals] from the left and right
hands.” Id., at 160. Although the electrodes’ design
variables—including spacing, shape, size, and
material—cannot be standardized across all exercise machines,
Dr. Lekhtman explained, a skilled artisan could undertake a
“trial and error” process of equalization. This would
entail experimentation with different electrode configurations in
order to optimize EMG signal cancellation. Id., at 155–156,
158.[
4] In 2010, the PTO issued
a determination confirming the patentability of the ’753
patent’s claims.
Biosig thereafter
reinstituted its infringement suit, which the parties had
voluntarily dismissed without prejudice while PTO reexamination was
underway. In 2011, the District Court conducted a hearing to
determine the proper construction of the patent’s claims, see
Markman v. Westview Instruments, Inc., 517 U. S. 370 (1996)
(claim construction is a matter of law reserved for court
decision), including the claim term “in spaced relationship
with each other.” According to Biosig, that “spaced
relationship” referred to the distance between the live
electrode and the common electrode in each electrode pair.
Nautilus, seizing on Biosig’s submissions to the PTO during
the reexamination, maintained that the “spaced
relationship” must be a distance “greater than the
width of each electrode.” App. 245. The District Court
ultimately construed the term to mean “there is a defined
relationship between the live electrode and the common electrode on
one side of the cylindrical bar and the same or a different defined
relationship between the live electrode and the common electrode on
the other side of the cylindrical bar,” without any reference
to the electrodes’ width. App. to Pet. for Cert.
43a–44a.
Nautilus moved for
summary judgment, arguing that the term “spaced
relationship,” as construed, was indefinite under §112,
¶2. The District Court granted the motion. Those words, the
District Court concluded, “did not tell [the court] or anyone
what precisely the space should be,” or even supply
“any parameters” for determining the appropriate
spacing. Id., at 72a.
The Federal Circuit
reversed and remanded. A claim is indefinite, the majority opinion
stated, “only when it is ‘not amenable to
construction’ or ‘insolubly
ambiguous.’ ” 715 F. 3d 891, 898 (2013)
(quoting Datamize, LLC v. Plumtree Software, Inc., 417 F. 3d
1342, 1347 (CA Fed. 2005)). Under that standard, the majority
determined, the ’753 patent survived indefiniteness review.
Considering first the “intrinsic evidence”—i.e.,
the claim language, the specification, and the prosecution
history—the majority discerned “certain inherent
parameters of the claimed apparatus, which to a skilled artisan may
be sufficient to understand the metes and bounds of ‘spaced
relationship.’ ” 715 F. 3d, at 899. These
sources of meaning, the majority explained, make plain that the
distance separating the live and common electrodes on each half of
the bar “cannot be greater than the width of a user’s
hands”; that is so “because claim 1 requires the live
and common electrodes to independently detect electrical signals at
two distinct points of a hand.” Ibid. Furthermore, the
major-ity noted, the intrinsic evidence teaches that this distance
cannot be “infinitesimally small, effectively merging the
live and common electrodes into a single electrode with one
detection point.” Ibid. The claim’s functional
provisions, the majority went on to observe, shed additional light
on the meaning of “spaced relationship.” Surveying the
record before the PTO on reexamination, the majority concluded that
a skilled artisan would know that she could attain the indicated
functions of equalizing and removing EMG signals by adjusting
design variables, including spacing.
In a concurring
opinion, Judge Schall reached the majority’s result employing
“a more limited analysis.” Id., at 905. Judge Schall
accepted the majority’s recitation of the definiteness
standard, under which claims amenable to construction are
nonetheless indefinite when “the construction remains
insolubly ambiguous.” Ibid. (internal quotation marks
omitted). The District Court’s construction of “spaced
relationship,” Judge Schall maintained, was sufficiently
clear: the term means “there is a fixed spatial relationship
between the live electrode and the common electrode” on each
side of the cylindrical bar. Ibid. Judge Schall agreed with the
majority that the intrinsic evidence discloses inherent limits of
that spacing. But, unlike the majority, Judge Schall did not
“presum[e] a functional linkage between the ‘spaced
relationship’ limitation and the removal of EMG
signals.” Id., at 906. Other limitations of the claim, in his
view, and not the “ ‘spaced relationship’
limitation itself,” “included a functional requirement
to remove EMG signals.” Ibid.
We granted certiorari,
571 U. S. ___ (2014), and now vacate and remand.
III
A
Although the parties
here disagree on the dispositive question—does the ’753
patent withstand definiteness scrutiny—they are in accord on
several aspects of the §112, ¶2 inquiry. First,
definiteness is to be evaluated from the perspective of someone
skilled in the relevant art. See, e.g., General Elec. Co. v. Wabash
Appliance Corp., 304 U. S. 364, 371 (1938) . See also
§112, ¶1 (patent’s specification “shall
contain a written description of the invention, and of the manner
and process of making and using it, in such full, clear, concise,
and exact terms as to enable any person skilled in the art to which
it pertains, or with which it is most nearly connected, to make and
use the same” (emphasis added)). Second, in assessing
definiteness, claims are to be read in light of the patent’s
specification and prosecution history. See, e.g., United States v.
Adams, 383 U. S. 39 –49 (1966) (specification); Festo
Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U. S. 722, 741
(2002) (prosecution history). Third, “[d]efiniteness is
measured from the viewpoint of a person skilled in [the] art at the
time the patent was filed.” Brief for Respondent 55 (emphasis
added). See generally E. Manzo, Patent Claim Construction in the
Federal Circuit §0.2, p. 9 (2014) (“Patent claims
. . . should be construed from an objective perspective
of a [skilled artisan], based on what the applicant actually
claimed, disclosed, and stated during the application
process.”).
The parties differ,
however, in their articulations of just how much imprecision
§112, ¶2 tolerates. In Nautilus’ view, a patent is
invalid when a claim is “ambiguous, such that readers could
reasonably interpret the claim’s scope differently.”
Brief for Petitioner 37. Biosig and the Solicitor General would
require only that the patent provide reasonable notice of the scope
of the claimed invention. See Brief for Respondent 18; Brief for
United States as Amicus Curiae 9–10.
Section 112, we have
said, entails a “delicate balance.” Festo, 535
U. S., at 731. On the one hand, the definiteness requirement
must take into account the inherent limitations of language. See
ibid. Some modicum of uncertainty, the Court has recognized, is the
“price of ensuring the appropriate incentives for
innovation.” Id., at 732. One must bear in mind, moreover,
that patents are “not addressed to lawyers, or even to the
public generally,” but rather to those skilled in the
relevant art. Carnegie Steel Co. v. Cambria Iron Co., 185
U. S. 403, 437 (1902) (also stating that “any
description which is sufficient to apprise [steel manufacturers] in
the language of the art of the definite feature of the invention,
and to serve as a warning to others of what the patent claims as a
monopoly, is sufficiently definite to sustain the
patent”).[
5]
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, 517 U. S.,
at 373 (quoting McClain v. Ortmayer, 141 U. S. 419, 424 (1891)
).[
6] Otherwise there would be
“[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, 236
(1942) . And absent a meaningful definiteness check, we are told,
patent applicants face powerful incentives to inject ambigu-ity
into their claims. See Brief for Petitioner 30–32 (citing
patent treatises and drafting guides). See also Federal Trade
Commission, The Evolving IP Marketplace: Aligning Patent Notice and
Remedies With Competition 85 (2011) (quoting testimony that patent
system fosters “an incentive to be as vague and ambiguous as
you can with your claims” and “defer clarity at all
costs”).[
7] Eliminating
that temptation is in order, and “the patent drafter is in
the best position to resolve the ambiguity in . . .
patent claims.” Halliburton Energy Servs., Inc. v. M–I
LLC, 514 F. 3d 1244, 1255 (CA Fed. 2008). See also Hormone
Research Foundation, Inc. v. Genentech, Inc., 904 F. 2d 1558,
1563 (CA Fed. 1990) (“It is a well-established axiom in
patent law that a patentee is free to be his or her own
lexicographer . . . .”).
To determine the proper
office of the definiteness command, therefore, we must reconcile
concerns that tug in opposite directions. Cognizant of the
competing concerns, we read §112, ¶2 to require that a
patent’s claims, viewed in light of the specification and
prosecution history, inform those skilled in the art about the
scope of the invention with reasonable certainty. The definiteness
requirement, so understood, mandates clarity, while recognizing
that absolute precision is unattainable. The standard we adopt
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, 270 (1916) . See also
United Carbon, 317 U. S., at 236 (“claims must be
reasonably clear-cut”); Markman, 517 U. S., at 389
(claim construction calls for “the necessarily sophisticated
analysis of the whole document,” and may turn on evaluations
of expert testimony).
B
In resolving
Nautilus’ definiteness challenge, the Fed-eral Circuit asked
whether the ’753 patent’s claims were “amenable
to construction” or “insolubly ambiguous.” Those
formulations can breed lower court confusion,[
8] for they lack the precision §112, ¶2
demands. It cannot be sufficient that a court can ascribe some
meaning to a patent’s claims; the definiteness inquiry trains
on the understanding of a skilled artisan at the time of the patent
application, not that of a court viewing matters post hoc. 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.
Appreciating that
“terms like ‘insolubly ambiguous’ may not be
felicitous,” Brief for Respondent 34, Biosig argues the
phrase is a shorthand label for a more probing inquiry that the
Federal Circuit applies in practice. The Federal Circuit’s
fuller explications of the term “insolubly ambiguous,”
we recognize, may come closer to tracking the statutory
prescription. See, e.g., 715 F. 3d, at 898 (case below)
(“[I]f 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, the
claim is insolubly ambiguous and invalid for indefiniteness.”
(internal quotation marks omitted)). But although this Court does
not “micromanag[e] the Federal Circuit’s particular
word choice” in applying patent-law doctrines, we 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, 40 (1997) . Falling short in
that regard, the expressions “insolubly ambiguous” and
“amenable to construction” permeate the Federal
Circuit’s recent decisions concerning §112,
¶2’s requirement.[
9]
We agree with Nautilus and its amici that such terminology can
leave courts and the patent bar at sea without a reliable
compass.[
10]
IV
Both here and in the
courts below, the parties have advanced conflicting arguments as to
the definiteness of the claims in the ’753 patent. Nautilus
maintains that the claim term “spaced relationship” is
open to multiple interpretations reflecting markedly different
understandings of the patent’s scope, as exemplified by the
disagreement among the members of the Federal Circuit
panel.[
11] Biosig responds
that “spaced relationship,” read in light of the
specification and as illustrated in the accompanying drawings,
delineates the permissible spacing with sufficient precision.
“[M]indful that
we are a court of review, not of first view,” Cutter v.
Wilkinson, 544 U. S. 709 , n. 7 (2005), we decline to
apply the standard we have announced to the controversy between
Nautilus and Biosig. As we have explained, the Federal Circuit
invoked a standard more amorphous than the statutory definiteness
requirement allows. We therefore follow our ordinary practice of
remanding so that the Court of Appeals 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, 515 (2005) ; Gasperini v. Center for
Humanities, Inc., 518 U. S. 415, 438 (1996) .
* * *
For the reasons stated,
we vacate the judgment of the United States Court of Appeals for
the Federal Circuit and remand the case for further proceedings
consistent with this opinion.
It is so ordered.
APPENDIX
Patent No. 5,337,753, Figure 1
