As background this case involves U.S. Patent No. 5,337,753 (the '753 patent), which relates to a heart rate monitor circuit design. The district court held claim 1 invalid for indefiniteness, and the Federal Circuit reversed.
Claim 1 of the '753 patent recites a heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures, comprising:
- an elongate member;
- electronic circuitry including a difference amplifier having a first input terminal of a first polarity and a second input terminal of a second polarity opposite to said first polarity; said elongate member comprising a first half and a second half;
- a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other;
- a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other;
- said first and second common electrodes being connected to each other and to a point of common potential;
- said first live electrode being connected to said first terminal of said difference amplifier and said second live electrode being connected to said second terminal of said difference amplifier;
- a display device disposed on said elongate member;
- wherein, said elongate member is held by said user with one hand of the user on said first half contacting said first live electrode and said first common electrode, and with the other hand of the user on said second half contacting said second live electrode and said second common electrode;
- whereby, a first electromyogram signal will be detected between said first live electrode and said first common electrode, and a second electromyogram signal, of substantially equal magnitude and phase to said first electromyogram signal will be detected between said second live electrode and said second common electrode;
- so that, when said first electromyogram signal is applied to said first terminal and said second electromyogram signal is applied to said second terminal, the first and second electromyogram signals will be subtracted from each other to produce a substantially zero electromyogram signal at the output of said difference amplifier;
- and whereby a first electrocardiograph signal will be detected between said first live electrode and said first common electrode and a second electrocardiograph signal, of substantially equal magnitude but of opposite phase to said first electrocardiograph signal will be detected between said second live electrode and said second common electrode;
- so that, when said first electrocardiograph signal is applied to said first terminal and said second electrocardiograph signal is applied to said second terminal, the first and second electrocardiograph signals will be added to each other to produce a non-zero electrocardiograph signal at the output of said difference amplifier;
- means for measuring time intervals between heart pulses on detected electrocardiograph signal;
- means for calculating the heart rate of said user using said measure time intervals;
- said means for calculating being connected to said display device;
- whereby, the heart rate of said user is displayed on said display device (emphasis added).
35 U.S.C. § 112(b) requires a patent claim "particularly point out and distinctly claim the invention" so the public is given notice of the scope of the claim, that is, what can't be done without patent license. The Federal Circuit has stated a claim is definite and valid if it "reasonably apprises one of ordinary skill in the art of the scope of the invention. The Federal Circuit has stated a claim is not indefinite, because it contains words of degree such as "substantially", the parties disagree on claim interpretation, the claim is difficult to interpret, or an error in the claim is correctable in multiple ways. The Federal Circuit has even stated a claim is only indefinite if it is "insolubly ambiguous."
The briefs are lengthy, but in a nutshell Nautilus argued that "spaced relationship" recited in "a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other" and "a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other" made claim 1 indefinite. It also argued that Biosig kept changing the meaning of "spaced relationship" to obtain allowance, avoid invalidity challenges, and prove infringement. Biosig argued that (1) Nautilus misrepresented the prosecution history, (2) one of ordinary skill would be able to measure whether the electrodes were in such a spaced relationship that would substantially eliminated EMG signals when the device was used, and (3) the claim had not undergone multiple metamorphoses.
The briefs are lengthy, but in a nutshell Nautilus argued that "spaced relationship" recited in "a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other" and "a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other" made claim 1 indefinite. It also argued that Biosig kept changing the meaning of "spaced relationship" to obtain allowance, avoid invalidity challenges, and prove infringement. Biosig argued that (1) Nautilus misrepresented the prosecution history, (2) one of ordinary skill would be able to measure whether the electrodes were in such a spaced relationship that would substantially eliminated EMG signals when the device was used, and (3) the claim had not undergone multiple metamorphoses.
Biosig states the question presented to the Supreme Court is as follows: whether Petitioner has shown that the Federal Circuit's test for patent indefiniteness under 35 U.S.C. § 112, para. 2, conflicts with this Court's precedent in light of the U.S. Patent and Trademark Office recently informing this Court that there was no conflict, and whether the Federal Circuit erred in giving respect to the presumption of validity specified by Congress in 35 U.S.C. § 282 in considering the invalidity defense of indefiniteness under 35 U.S.C. §112, para. 2.
Nautilus states the question presented to the Supreme Court is as follows: does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations— so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?
The SCOTUS blog has the legal briefs and more details at Nautilus, Inc. v. Biosig Instruments, Inc.
Nautilus states the question presented to the Supreme Court is as follows: does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations— so long as the ambiguity is not "insoluble" by a court—defeat the statutory requirement of particular and distinct patent claiming? Does the presumption of validity dilute the requirement of particular and distinct patent claiming?
The SCOTUS blog has the legal briefs and more details at Nautilus, Inc. v. Biosig Instruments, Inc.
I expect the Supreme Court to reformulate a definiteness requirement that is functionally like the standard for resolving ambiguity in contracts, that is, whatever ambiguity exists in the contract will be construed against the drafter. This will reemphasize U.S. patent law should be analyzed consistent with analogous areas of law and the Supreme Court's willingness to limit the Federal Circuit special rules. Whatever happens, I think this case has the potential to impact the value of many U.S. patents.
Copyright © 2014 Robert Moll. All rights reserved.
