Nautilus, Inc. v. Biosig Instruments, Inc.

Docket No. 2012-1289

Newman, Schall, Wallach
April 27, 2015

Brief Summary: On reconsideration after remand from the USSC requiring review under the “reasonable certainty” standard (as opposed to previous “not amendable to construction” or “insolubly ambiguous’” standards), DC decision of indefiniteness reversed and remanded.

Summary: This opinion addresses the June 2, 2014 remand from the USSC (Docket No. 13-369, 2014; see Nautilus, FC 2013). The patent-in-dispute, US 5,337,753 “is directed to a heart rate monitor that purports to improve upon the prior art by effectively eliminating ‘noise’ signals during the process of detecting a user’s heart rate” by “processing electrocardiograph (ECG) signals from which electromyogram (EMG) signals are substantially removed.” After several reexaminations and a Markman hearing, the DC held the ‘753 patent’s “spaced relationship” (between live and common electrodes) was indefinite. On appeal, the FC reversed and remanded, stating that “a claim is indefinite ‘only when it is ‘not amendable to construction’ or ‘insolubly ambiguous’” (Datamize, FC 2005) and finding “certain inherent parameters of the claimed apparatus, which to a skilled artisan may be sufficient to understand the metes and bounds of ‘spaced relationship’”. The USSC rejected that standard and vacated/remanded the decision, holding that “a patent is invalid for indefiniteness if its claims, read in light of the specification…and the prosecution history, fail to inform, with reasonable certainty those skilled in the art about the scope of the invention.” This opinion explained that DC indefiniteness determinations are considered de novo when the DC review includes only instrinsic evidence (the claim language, the specification, and the prosecution history), under “general principles of claim construction” (Interval Licensing, FC 2014; Enzo, FC 2010). Underlying factual determinations based on extrinsic evidence are reviewed for clear error (Teva, US 2015). It also explained that “word[s] of degree” are not “inherently indefinite”; the patent must provide “some standard for measuring that degree” (Enzo, FC 2010; Interval Licensing, FC 2014). And the definiteness of “purely functional” limitations is “highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area)” (Halliburton, FC 2008). It was also noted that the USSC standard “mandates clarity, while recognizing that absolute precision is unattainable” (Nautilus, US 2014 (“reasonable certainty”)). The opinion reviews the USSC’s “spectrum for interpretation of the phrase ‘reasonable certainty’” (see FN2; also stating “we may now steer by bright star of ‘reasonable certainty’, rather than the unreliable compass of ‘insoluble ambiguity’”). Under this standard, the FC concluded that Biosig’s claims were not indefinite. Although the term is not specifically defined, the FC concluded it would be understood from the intrinsic evidence (including an inventor declaration submitted during prosecution) to mean “neither infinitesimally small nor greater than the width of a user’s hands”. Thus, the term was found to “inform those skilled in the art about the scope of the invention with reasonable certainty” and the DC decision reversed and remanded.

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