Biosig Instruments, Inc. v. Nautilus, Inc.

Citation715 F.3d 891
Decision Date28 June 2013
Docket NumberNo. 2012–1289.,2012–1289.
PartiesBIOSIG INSTRUMENTS, INC., Plaintiff–Appellant, v. NAUTILUS, INC., Defendant–Appellee.
CourtUnited States Courts of Appeals. United States Court of Appeals for the Federal Circuit

OPINION TEXT STARTS HERE

Michael J. Bonella, Kessler Topaz Meltzer & Check LLP, of Radnor, PA, argued for plaintiff-appellant. With him on the brief was Paul B. Milcetic. Of counsel were Todd Kupstas and Jenna Pellecchia.

James E. Geringer, Klarquist Sparkman, LLP, of Portland, OR, argued for defendant-appellee. With him on the brief were John D. Vandenberg and Philip Warrick.

Before NEWMAN, SCHALL, and WALLACH, Circuit Judges.

Opinion for the court filed by Circuit Judge WALLACH. Concurring opinion filed by Circuit Judge SCHALL.

WALLACH, Circuit Judge.

Biosig Instruments, Inc. (Biosig) is the assignee of U.S. Patent No. 5,337,753 (“the '753 patent”), which is directed to a heart rate monitor associated with an exercise apparatus and/or exercise procedures. Biosig brought a patent infringement action against Nautilus, Inc. (Nautilus) in district court alleging that Nautilus infringed claims 1 and 11 of the '753 patent. After claim construction, Nautilus filed a motion for summary judgment seeking, in relevant portion, to have the '753 patent held invalid for indefiniteness. The district court granted Nautilus's motion, and Biosig appealed. Because the claims at issue are not invalid for indefiniteness, the district court's decision is reversed and remanded for further proceedings.

Background
I.

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 patentcol. 1 ll. 5–10. According to the patent, prior art monitors did not 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. Id. col. 1 ll. 19–22. Because EMG signals are of the same frequency range as electrical signals generated by the heart (“electrocardiograph” or “ECG” signals), EMG signals can mask ECG signals rendering heart rate determination while exercising difficult. Id. col. 1 ll. 22–25.

The '753 patent discloses an apparatus preferably mounted on exercise equipment that measures heart rates by, inter alia, processing ECG signals from which EMG signals are substantially removed. Id. col. 1. ll. 36–41. The claimed heart rate monitor consists of an elongate hollow cylindrical member that houses electronic circuitry as illustrated below:

IMAGE

'753 patent fig. 1. A user's left and right hands—100 and 200—each contact one of the “live” electrodes—9 and 13—and one of the “common” electrodes—11 and 15—on either end of the cylindrical member 3. Id. col. 2 ll. 50–64, col. 3 ll. 26–31. The electronic circuitry includes a difference amplifier 23, which is connected to the live electrodes 9 and 13. Id. col. 3 ll. 7–10. The common electrodes 11 and 15 are connected to each other and to a point of common potential, for example, a common ground. Id. col. 3 ll. 5–7. An illustration of the circuitry is shown below:

IMAGE

'753 patent fig. 2. Inputs 25 and 27 are of opposite polarity. Id. col. 3 ll. 10–13. As the EMG signals and other noise signals are of substantially equal amplitude and phase, they cancel each other out in the difference amplifier to provide a substantially zero output of EMG and other noise signals. Id. col. 3 ll. 33–43. In contrast, ECG signals, being of opposite phase, will be added and therefore further amplified in the difference amplifier so that the output of the difference amplifier is substantially due to the ECG signals only. Id. col. 3 ll. 44–50.

Claim 1 is representative and recites, in relevant part:

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;

said first and second common electrodes being connected to each other and to a point of common potential....

'753 patent col. 5 ll. 17–36 (emphases added). In addition to the capability of substantially removing EMG signals, claim 1 recites a monitor, a means for measuring time intervals between heart pulses, and a means for calculating the heart rate of a user using the measured time intervals. See id. col. 5 l. 37—col. 6 l. 15.

Asserted-dependent claim 11 further specifies that the claimed “elongate member” is “mounted on an exercise apparatus.” Id. col. 7 ll. 17–20. Figures 7 and 8 are illustrative of a heart rate monitor mounted on a bicycle and a stair-climbing exercise machine:

IMAGE

Id. figs. 7–8.

II.

The dispute between the parties has been ongoing for years, stemming from the late 1990s when Biosig was in discussions with Nautilus's predecessor Stairmaster Company regarding Biosig's patented technology. Despite these discussions, Stairmaster Company, and later Nautilus, began selling exercise equipment that Biosig alleges infringes its patented technology. These accused products consist of heart rate monitors mounted on exercise equipment.

Biosig sued Nautilus for infringing the '753 patent in August 2004 (2004 Action”). During the pendency of that litigation, Nautilus twice sought ex parte reexamination of the '753 patent from the United States Patent and Trademark Office (“PTO”). The first reexamination request was based primarily on U.S. Patent No. 4,444,200 (“Fujisaki”).1 The PTO granted Nautilus's request, and in April 2009, the PTO issued an office action rejecting, inter alia, claim 1 as anticipated by Fujisaki and claim 11 as obvious over Fujisaki in view of other prior art references. After Biosig filed its response to this PTO office action, Nautilus requested a second reexamination of the ' 753 patent, again, citing Fujisaki as the primary reference. The PTO granted Nautilus's second request for reexamination, and the two reexamination proceedings were consolidated in December 2009. The PTO ultimately concluded these reexamination proceedings in June 2010 and confirmed the patentability of the ' 753 patent without amendment. During the pendency of this reexamination proceeding, the parties voluntarily dismissed without prejudice the claims and counterclaims of the 2004 Action.

Upon conclusion of the reexamination proceeding, Biosig re-instituted a patent infringement action against Nautilus on October 8, 2010. On August 11, 2011, the district court conducted a Markman hearing, and on September 29, 2011, issued its order construing certain disputed claim terms.2 On November 10, 2011, Nautilus moved under Federal Rule of Civil Procedure 56 seeking summary judgment on two issues: infringement and invalidity for indefiniteness.

On February 22, 2012, the district court held a hearing on Nautilus's motion for summary judgment. As to the issue of infringement, the district court denied Nautilus's motion as premature because the parties had yet to undertake significant discovery. Summ. J. Hr'g Tr. 5:23—6:2, Biosig Instruments, Inc. v. Nautilus, Inc., No. 10CV7722 (S.D.N.Y. Feb. 22, 2012), ECF No. 58 (“Summ. J. Hr'g Tr.”). On invalidity, 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.

After the parties completed summary judgment briefing but before the hearing, Nautilus filed a third request for reexamination of the '753 patent on January 25, 2012, and again, Nautilus cited Fujisaki as a primary prior art reference. This time, on February 17, 2012, the PTO denied Nautilus's request, finding that there were no substantial new questions of patentability raised by the request. Biosig was notified of the PTO's denial of Nautilus's third reexamination request after the district court's summary judgment hearing and decision. In light of this new fact, Biosig moved for reconsideration of the district court's decision granting Nautilus's motion for summary judgment of invalidity, which the district court denied on June 12, 2012. Biosig timely appeals. We have jurisdiction pursuant to 28 U.S.C. § 1295(a)(1).

Discussion
I.

This court reviews the district court's grant or denial of motions for summary judgment under the law of the regional circuit. MicroStrategy Inc. v. Bus. Objects, S.A., 429 F.3d 1344, 1349 (Fed.Cir.2005). The Second Circuit reviews de novo a district court's grant of a motion for summary judgment. Kuebel v. Black & Decker Inc., 643 F.3d 352, 358 (2d Cir.2011). Summary judgment motions may be granted only where “there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law.” Fed.R.Civ.P. 56(a). In making this determination, a court must “draw all reasonable inferences in favor of the nonmoving party, and it may not make credibility determinations or weigh the evidence.” Reeves v. Sanderson Plumbing Prods., Inc., 530 U.S. 133, 150, 120 S.Ct. 2097, 147 L.Ed.2d 105 (2000).

II.

The sole issue presented to this court is whether the district court erred in holding that the asserted claims of the '753 patent is invalid for indefiniteness as a matter of law. In particular, the district court held that “spaced relationship” as recited in claim 1 and referring to the spacing between the common and live electrodes was not distinctly and particularly claimed in the patent in violation of 35 U.S.C. § 112, ¶ 2.3

Indefiniteness is a legal issue this court reviews...

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