The Supreme Court reverses the Federal Circuit’s Indefiniteness Standard in a decision likely to negatively impact patent owners.
As many know who have been involved in patent litigation, it is often impossible to determine claim meaning in some patents. This uncertainty makes patent claim construction extremely difficult – both for the lawyer advising a client and the district judge. It also allows certain patent owners (usually trolls) to file outlandish patent infringement lawsuits based on poorly worded and vague claim interpretation.
The uncertainty existed despite the definitiveness requirement in the Patent Act which 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. The uncertainly existed because the Federal Circuit’s standard to determine indefiniteness under this §112 requirement was whether the claim is “amenable to construction.” In my view, this is a much lower standard than the statutory language requires.
In Nautilus, Inc., v. Biosig Instruments, Inc., the Supreme Court reversed the Federal Circuit’s standard and held that 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.
Assigned to Biosig Instruments, Inc., the patent in dispute (U.S. Patent 5,337,753, 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 the case, refers to a “heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures.” The claim includes, 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 a patent infringement suit, alleging that Nautilus, Inc. sold exercise machines containing Biosig’s patented technology. The District Court, after conducting a “Markman” 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 Federal Circuit determined, the ’753 patent survived indefiniteness review. As noted above, the Supreme Court correctly reversed and finally added “teeth” to the definiteness requirement of the patent act.
This decision may affect thousands of claims. It also might affect thousands of licenses and previous analyses because patent lawyers, in performing invalidity analysis have previously had no choice but to follow the Federal Circuit’s holdings and have often ignored the definiteness requirement of the Patent Act.
The Nautilus decision will also make invalidity of patents much easier – especially in administrative procedures before the patent office such as covered business method review and inter partes review.