Supreme Court to Consider Legal Standard for Patent Indefiniteness

On January 10, 2014, the U.S. Supreme Court granted certiorari in Nautilus Inc. v. Biosig Instruments, Inc., to review the legal standard for holding a patent claim invalid as indefinite, under 35 USC § 112, second paragraph.

The Issue Presented

The issue was presented in the petition for certiorari as follows:

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.

The Underlying Indefiniteness Issue

The claim language at issue in the Federal Circuit decision arises in Biosig’s U.S. Patent 5,337,753, directed to a heart rate monitor associated with an exercise apparatus and/or exercise procedures. As set forth in the Federal Circuit decision, the claimed heart rate monitor is said to “eliminate[] signals given off by skeletal muscles (“electromyogram” or “EMG” signals), which are brought about when users move their arms or squeeze the monitor with their fingers.

The specific indefiniteness issue surrounded what it meant for electrodes to be in a “spaced relationship” with each other.

The district court determined that the term was indefinite, because “a spaced relationship did not tell me or anyone what precisely the space should be . . . . Not even any parameters as to what the space should be . . . . Nor whether the spaced relationship on the left side should be the same as the spaced relationship on the right side.”

The Federal Circuit reviewed the issue de novo under the following legal standard:

A claim is indefinite only when it is “not amenable to construction” or “insolubly ambiguous.”

Although the term was not expressly defined in the specification, the Federal Circuit found the “claim language, specification, and … figures” of the ‘753 patent to “provide sufficient clarity to skilled artisans as to the bounds of this disputed term.”  Thus, the Federal Circuit reversed the district court’s invalidity judgment and remanded for further proceedings.

Amicus Briefs Supporting the Petition for certiorari

Two amicus briefs were filed in support of the petition for certiorari:

An amicus brief jointly filed by Amazon.Com, Inc., Google Inc., Limelight Networks, Inc., SAP America, Inc., Newegg Inc., Netapp, Inc., Garmin Ltd., SAS Institute Inc., Mediafire, ESRI, And J.C. Penney Corporation, Inc., cast indefiniteness as “a growing problem of national importance” and charges that the Federal Circuit’s “refusal to police indefinite patents distorts patentee behavior at the USPTO.”

An amicus brief jointly filed by the Electronic Frontier Foundation (a non-profit civil liberties organization) and Public Knowledge (a non-profit organization dedicated to preserving the openness of the Internet and the public’s access to knowledge, promoting creativity through balanced intellectual property rights; and upholding and protecting the rights of consumers to use innovative technology lawfully) asserted that the Federal Circuit’s test for indefiniteness “invites abuse and impedes innovation,” and has caused “widespread well-known harm.”

Amicus Briefs on the Merits 

Patentees, stakeholders and practitioners interested in this issue should consider submitting amicus briefs on the merits.