Biosig Instruments, Inc. v. Nautilus, Inc.
783 F.3d 1374
| Fed. Cir. | 2015Background
- Biosig owns U.S. Patent No. 5,337,753 for a heart-rate monitor that removes EMG "noise" from ECG signals using paired "live" and "common" electrodes on an elongate member.
- Claim 1 recites a "spaced relationship" between live and common electrodes; the parties disputed what that phrase means.
- Nautilus moved for summary judgment that the patent was invalid for indefiniteness based on the term "spaced relationship." The district court granted summary judgment of indefiniteness.
- The Federal Circuit (Nautilus I) reversed, finding the claim language, specification, prosecution history, and extrinsic evidence provided inherent parameters enabling a skilled artisan to determine the spacing.
- The Supreme Court granted certiorari, vacated, and remanded, instructing the Federal Circuit to apply the "reasonable certainty" standard for indefiniteness.
- On remand, the Federal Circuit again held the claims are not indefinite: read in light of the specification and prosecution history, a skilled artisan can determine the appropriate spacing by testing for substantial removal of EMG signals, and thus the claims meet § 112 ¶ 2 under the Nautilus II standard.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether the term "spaced relationship" renders the claims indefinite under 35 U.S.C. § 112 ¶ 2 | Biosig: "Reasonable certainty" is the familiar standard; intrinsic evidence and prosecution history enable a skilled artisan to determine spacing by testing for substantial EMG removal. | Nautilus: "Spaced relationship" points in opposing directions and lacks objective boundaries; thus it fails to inform with reasonable certainty. | Reversed district court; term is not indefinite—claims inform skilled artisans with reasonable certainty given the specification, prosecution history, and measurable functional test. |
Key Cases Cited
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014) (Supreme Court articulating the "reasonable certainty" indefiniteness standard)
- Teva Pharm. USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831 (2015) (district-court factual findings based on extrinsic evidence reviewed for clear error; intrinsic-only constructions reviewed de novo)
- Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (application of "reasonable certainty" to terms of degree and reliance on embodiments to provide objective boundaries)
- Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342 (Fed. Cir. 2005) (prior Federal Circuit standard referring to "insolubly ambiguous" language)
- Microsoft Corp. v. i4i Ltd. P’ship, 131 S. Ct. 2238 (2011) (presumption of patent validity and clear-and-convincing-evidence standard for invalidity defenses)
- Hoffer v. Microsoft Corp., 405 F.3d 1326 (Fed. Cir. 2005) (a "whereby" clause that is material to patentability cannot be ignored when construing claim scope)