On 26 April 2013, the Federal Circuit issued an opinion in Biosig Instruments, Inc. v. Nautilus, Inc. (appeal no. 12-1289) and gave some explanation about the amount of indefiniteness allowable in patent claims.
Procedurally, Biosig sued Vancouver, Wash.-based Nautilus for patent infringement in 2004 based on its U.S. Patent No. 5,337,753. The ’753 patent covered a device that can give a reading on a person’s heart rate while on a stationary bike, treadmill or other cardio machine.
In turn, Nautilus filed a request with the U.S. Patent and Trademark Office (USPTO) to re-examine the patent. Nautilus argued that the invention was not novel and the claims had already been disclosed in prior written references. Both parties voluntarily dismissed the litigation while the USPTO reviewed the patent. In June 2010, the office ruled for Biosig and found the claims were patentable – the claims survived unamended.
The ’753 patent 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. ’753 patent col. 1 ll. 5–10. In relevant part, claim 1 recites as follows:
1. 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 . . .
After the re-exam proceedings, on 8 October 2010, Biosig re-instituted a patent infringement action against Nautilus. On 11 August 2011, the district court conducted a Markman hearing, and on 29 September 2011, issued its order construing certain disputed claim terms. The order included a construction of the disputed term, “spaced relationship.” According to the Federal Circuit, “the district court nonetheless determined that ‘space relationship’ was ambiguous, and therefore, found Biosig’s contentions pertaining to this term unpersuasive,” and cited to J.A. 1391:15–21 (August 11, 2011 Markman Hearing).
On 10 November 2011, Nautilus moved under Federal Rule of Civil Procedure 56 seeking
summary judgment on invalidity for indefiniteness. The district court granted Nautilus’s motion, holding that the ’753 patent’s “spaced relationship” term as recited in claim 1 was indefinite as a matter of law. Summ. J. Hr’g Tr. 51:21–52:1. The district judge pointed out that the patent failed to give any specific measurement, such as which fingers each electrode should correspond to on each hand, or indicate whether the spacing should be the same on both handles. The spacial relationship, he said, wasn’t “distinctly and particularly claimed.”
On appeal, the Federal Circuit reasons that the disputed term “spaced relationship” does not suffer from indefiniteness. Because the term was amenable to construction, “indefiniteness here would require a showing that a person of ordinary skill would find ‘spaced relationship’ to be insolubly ambiguous—that it fails to provide sufficient clarity delineating the bounds of the claim to one skilled in the art.” The court further reasoned that “a skilled artisan would find such boundaries provided in the intrinsic evidence . . . .”
According to current U.S. patent law, 35 U.S.C. § 112, ¶ 2, 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.” However, according to case law, a claim is indefinite only when it is “not amenable to
construction” or “insolubly ambiguous.” Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir. 2005) (internal quotations and citations omitted).
In this case, in reference to the issued patent, the Federal Circuit found that the language of the specification and the diagrams showing where the electrodes should be “are telling and provide sufficient clarity” to avoid a finding of indefiniteness. The Federal Circuit reasoned that the explanation of how the heart monitor functioned gave enough of a sense of what “spaced relationship” meant. Even if the term, taken alone, was imprecise, its parameters were limited by virtue of the fact that the electrodes could only be so far apart and still work. The Federal Circuit further reasoned that “[t]he claimed apparatus has inherent parameters where the ‘spaced relationship’ cannot be larger than the width of a user’s hand.”
General principles of claim construction apply when determining indefiniteness. Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332–33 (Fed. Cir. 2010). The Federal Circuit reminded us that courts should primarily consider the intrinsic evidence consisting of the claim language, the specification, and the prosecution history. In addition, similar to claim construction, courts may consider certain extrinsic evidence in resolving disputes regarding indefiniteness. Exxon Research & Eng’g Co., 265 F.3d at 1376 (citing Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1454 (Fed. Cir. 1998) (en banc)); see also Verve, LLC v. Crane Cams, Inc., 311 F.3d 1116, 1119-20 (Fed. Cir. 2002) (recognizing that guidance as to measurement of a term of degree can come from the intrinsic record or from the knowledge of a person of ordinary skill in the art).
The Federal Circuit reminded us that “If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which
reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.” Exxon Research & Eng’g Co., 265 F.3d at 1375.
The Federal Circuit further reasoned that “inquiries as to the size of the users’ hands, placement of fingers, and the ‘composition of the handle’ may be relevant, if at all, to
issues that relate to enablement under § 112, ¶ 1, not indefiniteness under § 112, ¶ 2, because they are directed to the operability of varying embodiments of the claimed
heart rate monitor, not to the precision of the claims at issue.” The Federal Circuit concluded that the “district court viewed ‘spaced relationship’ in a vacuum by choosing to turn a blind eye to the functional aspects of claim 1.”
There are a few lessons from this opinion. Patent writers need to put as much detail in the specification as possible. In this case, the abundant figures and description were persuasive to imply intrinsic evidence and perhaps will lead the trial court to consider some extrinsic evidence. Further, the claims should sufficiently explain the relationships between the various parts of the claimed invention. Finally, this opinion shows that claims may be written in a variety of ways and still be upheld and enforceable. Writing several sets of apparatus claims is best.