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.

It is very frustrating when encountering patents and patent applications with useless titles and abstracts. A simple search at the U.S. Patent Office reveals thousands of them. US Patent Publication Number 2002/0125893 is a perfect example:

ELECTRIC DEVICE
Abstract
An electronic device comprising a processor 4 and a connector 2 for connecting an external device to the electronic device. The connector has a plurality of electrical contacts 23-27 at least one of which 23 is connected to the processor 4. The processor 4 is arranged to monitor the status of a first electrical contact 23 and to determine the type of external device connected to the connector 2 in dependence on the status of the first electrical contact 23.

Titles

MPEP 606 and 37 C.F.R. 1.72(a) address the proper content of the title for a patent application. In part, 37 C.F.R. 1.72(a) states,”[t]he title of the invention . . . must be as short and specific as possible.” The MPEP instructs that a “title should be brief but technically accurate and descriptive and should contain fewer than 500 characters.” The words “improved,” “improvement,” and the articles “a,” “an,” and “the” should not be included as the first word of the title of the invention. In fact, the articles “will be deleted when the Office enters the title into the Office’s computer records, and when any patent issues.”

The MPEP states that where the “title is not descriptive of the invention claimed, the examiner should require the substitution of a new title that is clearly indicative of the invention to which the claims are directed,” (emphasis added). Thus, applicants and patent practitioners should not try to obscure their invention – and frustrate the intent of the patent system – by giving readers worthless titles. In my opinion, the title of US Pat. Pub. No. 2002/0125893 is not sufficiently descriptive and should be changed.

Abstracts

MPEP 608.01(b) and 37 C.F.R. 1.72(b) address the Abstract of the Disclosure for patent applications. In part, 37 C.F.R. 1.72(b) states that an abstract “may not exceed 150 words in length,” and that “[t]he purpose of the abstract is to enable the United States Patent and Trademark Office [USPTO] and the public generally to determine quickly from a cursory inspection the nature and gist of the technical disclosure,” (emphasis added).

MPEP 608.01(b) further states that the “examiner in the first Office action should require the submission of an abstract directed to the technical disclosure in the specification.” It further states that, “[u]pon passing the application to issue, the examiner should make certain that the abstract is an adequate and clear statement of the contents of the disclosure,” (emphasis added).

MPEP 608.01(b)(B) states, “[t]he content of a patent abstract should be such as to enable the reader thereof, regardless of his or her degree of familiarity with patent documents, to determine quickly from a cursory inspection of the nature and gist of the technical disclosure” and “should include that which is new in the art to which the invention pertains,” (emphasis added).

MPEP 608.01(b)(B) gives further advice:

• A patent abstract is a concise statement of the technical disclosure of the patent and should include that which is new in the art to which the invention pertains.
• If the patent is of a basic nature, the entire technical disclosure may be new in the art, and the abstract should be directed to the entire disclosure.
• If the patent is in the nature of an improvement in old apparatus, process, product, or composition, the abstract should include the technical disclosure of the improvement.
• In certain patents, particularly those for compounds and compositions, wherein the process for making and/or the use thereof are not obvious, the abstract should set forth a process for making and/or a use thereof.
• If the new technical disclosure involves modifications or alternatives, the abstract should mention by way of example the preferred modification or alternative.
• The abstract should not refer to purported merits or speculative applications of the invention and should not compare the invention with the prior art.
• Where applicable, the abstract should include the following: (1) if a machine or apparatus, its organization and operation; (2) if an article, its method of making; (3) if a chemical compound, its identity and use; (4) if a mixture, its ingredients; (5) if a process, the steps. Extensive mechanical and design details of apparatus should not be given.

In my opinion, the abstract of US Pat. Pub. No. 2002/0125893 (shown above) fails to conform to the intent and specific counsel provided in the MPEP. There should be at least some description of the applicability of the invention. After reading this abstract, I am left to guess about the novelty of a “processor . . . [that] monitor[s] the status of a first electrical contact . . . and to determine[s] the type of [an] external device.”

Thus, adequate care should be taken when writing titles and abstracts for the benefit of all who read patents and patent applications.

Patent applications filed with the U.S. Patent Office (USPTO) after 16 March 2013 will be subject to a broader definition of “prior art.” Perhaps this will be a stronger or more difficult barrier for patentability.

Current Version of Prior Art (before 16 March 2013)

• information that is “known or used by others” before an invention is conceived
• prior art includes only public uses or sales that have occurred within the U.S.
• prior U.S. patents and published applications are prior art as of the earliest filing date within the U.S.

New Version of Prior Art (after 16 March 2013)

• prior art includes any information that is “otherwise available to the public” before the filing date.
• prior art includes public uses or sales anywhere in the world.
• prior U.S. patents and published applications are prior art as of the earliest effective filing date anywhere in the world.

It is time to start adapting our thinking, at least when considering filing U.S. patent applications.

It is difficult to broadly claim business method inventions. Often, the novelty in these inventions is found in a new way of interacting among people, businesses and the like. Besides compositions of matter, there are generally method and system claims in patents. Patent claim writers can occasionally make the mistake of including a method step as an element in a system or device claim.

One recent Federal Circuit case decided 21 November 2005 presented an issue of first impression – the propriety of having a method step in a system claim. IPXL Holdings, L.L.C. v. Amazon.com, Inc. (PDF) is the decision from an appeal from the Eastern District of Virginia (appeal no. 2005-1009). IPXL sued Amazon, alleging that Amazon’s “1-click system” infringed claims 1, 2, 9, 15 and 25 of U.S. Patent No. 6,149,055.

The district court found that claim 25 was indefinite under 35 U.S.C. § 112, second paragraph, because claim 25 attempted to claim both a system and a method for using that system. Section 112, paragraph 2, requires that the claims of a patent “particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention.” Claims 1, 2 and 25 are shown here.

1. An electronic financial transaction system for executing financial transactions, the transactions being characterized by a transaction type and a plurality of transaction parameters, the system comprising:
a central controller;
a communications network;
a terminal device selectively connectable to the central controller through the communications network, the terminal device comprising:
a processor;
a display connected to the processor;
an input mechanism for providing input to the processor;
the system further comprising means for storing user defined transaction information, the transaction information comprising at least one of user defined transactions and user defined transaction parameters;
the processor causing the display to display on a single screen stored transaction information;

the input mechanism enabling a user to use the displayed transaction information to execute a financial transaction or to enter selections to specify one or more transaction parameters.

 

2. The system of claim 1 wherein the system predicts transaction information that a user of the terminal will desire based on stored data for that user.

 

25. The system of claim 2 wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters. (emphasis added)

As the court reasoned, it is unclear whether infringement of claim 25 occurs when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction. The court held that claim 25 recites both a system and the method for using that system, it does not apprise a person of ordinary skill in the art of its scope, and therefore claim 25 must be invalid under 35 U.S.C. § 112, paragraph 2.

According to the court, the rule to avoid claiming both a method and a system at the same time is “well recognized and has been incorporated into the U.S. Patent Office’s Manual of Patent Examination Procedure” (MPEP) at § 2173.05(p)(II) (1999) (“A single claim which claims both an apparatus and the method steps of using the apparatus is indefinite under 35 U.S.C. 112, second paragraph.”)

The lesson for both inventor and patent attorney is to carefully and fully avoid including steps or actions to be taken in a system or device claim.