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Supreme Court hears oral arguments in Nautilus v. Biosig Instruments

April 29, 2014

Yesterday, the Supreme Court heard oral arguments in Nautilus Inc. v. Biosig Instruments, Inc., a patent case addressing the issues of whether an ambiguous patent claim may still be valid so long as the ambiguity is not insoluble, and whether the presumption of validity in a patent that issues with ambiguous claims is at odds with the statutory requirement to particularly point out and distinctly claim subject matter.

Biosig sued Nautilus in 2004, alleging that Nautilus had infringed U.S. Patent No. 5,337,753 ("the '753 patent") which disclosed technology related to grip activated heart rate monitors commonly available on exercise equipment such as treadmills, stair-climbers and stationary bikes.  Following claim construction, Nautilus moved for summary judgment based on invalidity of the '753 patent, arguing that the use of the term "spaced relationship" within the claims rendered the patent invalid for indefiniteness because neither the claims nor the specification adequately described the necessary placement of electrodes within the grip portion of the monitor.

The district court agreed, granting the Nautilus motion for summary judgment, which Biosig appealed.  On appeal, the Federal Circuit reversed the summary judgment of invalidity, stating that a claim is invalid for indefiniteness only when it is "not amenable to construction" or is "insolubly ambiguous."  The Federal Circuit determined that the district court actually had construed the claim during its analysis, meaning that it was amenable to construction.  The Federal Circuit also pointed out that the maximum distance between the electrodes was limited to the width of a users hand, and that the minimum distance was limited to the point where the electrodes would effectively merge - inherent parameters that it felt would allow one of ordinary skill in the art to understand the metes and bounds of the "spaced relationship" term, meaning that it was not insolubly ambiguous.  Nautilus petitioned the Supreme Court, asking whether the acceptance of ambiguous (yet soluble) claims and the presumption of validity in issued patents are at odds with the statutory requirement of definiteness.

At oral argument, the attorney for Nautilus argued that the "spaced relationship" claim had multiple reasonable interpretations, and that allowing such an ambiguous claim defeats the public notice function of the patent laws because the term could reasonably mean any spacing whatsoever.  Chief Justice Roberts seemed to disagree, and followed a line of questions suggesting that he agreed with the Federal Circuit's conclusion that some guidance for the minimum and maximum spacing between electrodes can be taken from the intended use.  Justice Scalia likened the argument that a claim must be invalid if it has multiple reasonable interpretations to the practice of construing a statute, stating that while a statute may have multiple reasonable interpretations, the Court attempts to choose the best interpretation, suggesting that a claim having multiple reasonable interpretations is not viewed by the Court as fatally flawed.  The court asked several times whether the Solicitor General's standard of "in light of the specification and the prosecution history, would a person skilled in the art reasonably understand the scope of the claim" be preferable to the Federal Circuit approach of amenable to construction and insoluble ambiguity, suggesting a shift towards an easier met standard of indefiniteness in their ruling.  This line of questioning is not surprising, given the amici briefs filed by the IPO, ABA, and AIPLA which, for the most part, were not comfortable with the insolubly ambiguous standard.

Biosig's attorney argued in response to questioning that the claim was not ambiguous because some reasonable amount of experimentation is allowed when it comes to claim support, and that it was implicit from the use of the word "whereby" in the claim that some experimentation was necessary in order to achieve the right balance and placement of the sensors in various embodiments, though Justice Scalia disagreed that the claim term "whereby" was an invitation to experiment.  Perhaps sensing the demise of the insoluble ambiguity test, Biosig's attorney attempted throughout his remarks to maintain the high standard for indefiniteness of the insoluble ambiguity test while disclaiming any reliance upon it.  The attorney on behalf of the United States generally supported the idea of picking a best reasonable interpretation from amongst multiple reasonable interpretations.

While some predicted that this case would result in a modification of the presumption of validity, it was not a topic that was heavily argued or questioned, and seems unlikely to change.  Conversely, the amenable to construction and insoluble ambiguity test was heavily discussed, denoting a likely modification, possibly a shift to the PTO standard of a person skilled in the art's reasonable understanding in light of the specification and claims, or the Solicitor General's standard which is similar, but also includes prosecution history.  News coverage of this case unsurprisingly groups it with other legislation and efforts aimed at patent assertion entities, under the theory that they might represent a disproportionate amount of the asserted ambiguous claims.  However, claim ambiguity can often be unintentional and unrealized until litigation arises, so any change in the law of indefiniteness is likely to affect a wide variety of patents and patent holders. 

No conclusions can be made based solely on the content of the oral argument, but a recurring theme of the questioning was the lack of description of the "spaced relationship" within the specification itself, suggesting that the Court sees the issue of indefiniteness as being impacted by the separate issue of enablement, with Justice Sotomayor stating that both the specification and the claims "make up the scope of the patent."  In light of the Court's focus on the specification itself and a potential lowering of the standard for indefiniteness, claim drafting, valuation of patents, and enforcement of patents should be approached with an eye toward whether the specification itself includes a clear, concise, and concrete disclosure of the claim limitations, in order to best be prepared for the impact of forthcoming decision in Nautilus Inc. v. Biosig Instruments, Inc.

A transcript of yesterday's argument can be found here.