Nautilus, Inc. v. Biosig Instruments, Inc.
Case #: 134 S. Ct. 2120
Full Text Opinion: http://www.law.cornell.edu/supremecourt/text/13-369
LexisNxis Link: 2014 U.S. LEXIS 3818
Westlaw Link: Unknown
Patents: The standard to determine definiteness of patent claims requires review by someone skilled in the art.
The patent in dispute in this case is a heart-rate monitor used in conjunction with exercise equipment which claims
to filter out electromyogram signals (EMG) in order to produce a better electrocardiograph signal (ECG).
Biosig Instruments, Inc. is a heart rate monitor manufacturing company based in Canada and holds the patent in question.
Nautilus, Inc. is manufactures, develops and markets exercise equipment. Biosig filed this patent infringement suit
claiming that Nautilus sold machines which contained Biosig's patented technology, and did so without obtaining a license.
The District Court for the Southern District of New York heard the case and concluded the patent claim did not pass a requirement of definiteness under 35 USCS § 112. On appeal, the Federal Circuit court reversed and remanded stating the patent claim did pass definiteness.
The Supreme Court granted Writ of certiorari and now holds in a unanimous decision that the Federal Circuit court's standard allows ambiguity in some claims and therefore does not satisfy the definiteness requirement of 35 USCS § 112.
The Patent Act of 1870 required one or more claims with particularity and definiteness in order for the successful assignment of a patent. The Patent Act of 1952 also requires the claim to be particular and definite, and 35 USCS § 282 invalidates any patent that does not meet that requirement.
The Court stated that "Definiteness is to be evaluated from the perspective of an individual who is skilled in the relevant art." Additionally, definiteness is determined after "claims are to be read in light of the patent’s specification and prosecution history", and section 112 of 35 USCS § 112 requires a "delicate balance". The standard adopted by the Court is "the certainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter." The Court further clarified that "the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc."
As such, the Federal Circuit court's ruling allowed too much ambiguity and imprecision. The case is REMANDED to the Federal Circuit court.