02 June 2014

Law in Plain English: Nautilus, Inc. v. Biosig Instruments, Inc.

This is one in a series of posts designed to describe court decisions in plain English. For more detail and background on the legal issues, see the link to the case below. For similar posts, click here.

SCOTUSblogNautilus, Inc. v. Biosig Instruments, Inc.

Argument: Apr 28 2014 (Aud.)

Background: Biosig Instruments, Inc. is the assignee of a patent for a heart rate monitor associated with an exercise apparatus and/or exercise procedures. Biosig brought a patent infringement action against Nautilus, Inc. alleging that Nautilus infringed Biosig's patent. The Patent Act, 35 U.S.C. §112, requires that the specification of a patent "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention;" The district found that the term "spaced relationship" in the patent was not defined with any parameters, and as a result, granted Nautilus's motion as to invalidity. The Federal Circuit reversed, finding that a claim is indefinite only when it is "not amenable to construction" or "insolubly ambiguous." In this case, the variables affecting the "spaced relationship" could be determined by those skilled in the art. Thus, "spaced relationship" could not be said to be insolubly ambiguous.

Issue: The questions before the Court are (1) whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations – so long as the ambiguity is not “insoluble” by a court – defeats the statutory requirement of particular and distinct patent claiming; and (2) whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.

Holding: In a unanimous decision, the Supreme Court ruled that a patent is invalid for indefiniteness if its claims, read in light of the patent specification and prosecution history, failed to inform those skilled in the art about the scope of the invention.
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