Nautilus, Inc. v. Biosig Instruments, Inc.
134 S. Ct. 2120
| SCOTUS | 2014Background
- The ’753 patent, assigned to Biosig, covers a heart-rate monitor designed to filter EMG interference from ECG signals during exercise.
- The patent’s key claim term is “spaced relationship” between live and common electrodes on a dual-handed cylindrical bar.
- The District Court held the term indefinite under §112, ¶2 and granted Nautilus summary judgment.
- The Federal Circuit reversed, adopting a standard that allowed some ambiguity so long as the claim was “amenable to construction” and not insolubly ambiguous.
- The Supreme Court vacated and remanded, rejecting the Federal Circuit’s standard and adopting a requirement that claims be definite enough to inform with reasonable certainty the scope of the invention, considering the specification and prosecution history.
- The Court instructed the Federal Circuit to reassess the indefiniteness issue under the new standard and to determine whether the ’753 patent is sufficiently definite in light of the specification and prosecution history.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Is the Federal Circuit’s “insolubly ambiguous”/“amenable to construction” standard correct? | Nautilus argues the standard tolerates too much ambiguity. | Biosig argues the standard provides adequate notice of scope. | No; the standard is invalid as it undermines definiteness. |
| What is the proper definiteness standard under §112, ¶2? | Definiteness should be judged as of a skilled artisan with reasonable certainty. | A flexible standard tolerating some ambiguity is acceptable. | Patents must inform with reasonable certainty, balancing precision and language limits. |
| Should the case be remanded for reconsideration under the Court’s new standard? | Jurisdiction to apply a proper standard is necessary. | Remand is appropriate for proper application of the standard. | Yes; remand to the Federal Circuit for reevaluation under the prescribed standard. |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (1996) (established patent claim construction framework; notices scope of invention)
- Festo Corp. v. Shoketsu Kinzo- ku Kogyo Kabushiki Co., 535 U.S. 722 (2002) (definiteness and incentives for innovation; language limits in patent scope)
- United Carbon Co. v. Binney & Smith Co., 317 U.S. 228 (1942) (definiteness and public notice function of claims; zone of uncertainty)
- Minerals Separation, Ltd. v. Hyde, 242 U.S. 261 (1926) (patent certainty not greater than reasonable given subject matter)
- United States v. Adams, 383 U.S. 39 (1966) (patent specification and enablement guidance to skilled artisans)
- Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17 (1997) (require probative standard for evaluating patent claim issues)
- Johnson v. California, 543 U.S. 499 (2005) (remanding matters for proper application of standard)