Biosig Instruments, Inc. v. Nautilus, Inc.

• Decision Date: 27 April 2015
• Docket Number: No. 2012–1289.,2012–1289.
• Citation: 114 U.S.P.Q.2d 1651,783 F.3d 1374
• Parties: BIOSIG INSTRUMENTS, INC., Plaintiff–Appellant v. NAUTILUS, INC., Defendant–Appellee.
• Court: U.S. Court of Appeals — Federal Circuit

783 F.3d 1374

114 U.S.P.Q.2d 1651

BIOSIG INSTRUMENTS, INC., Plaintiff–Appellant

v.NAUTILUS, INC., Defendant–Appellee.

No. 2012–1289.

United States Court of Appeals, Federal Circuit.

April 27, 2015.

Mark David Harris, Proskauer Rose LLP, New York, N.Y., argued for plaintiff-appellant. Also represented by Paul Milcetic, Villanova, PA; Todd Kupstas, Kessler Topaz Meltzer & Check, LLP, Radnor, PA; Daniel C. Mulveny, Kessler Topaz Meltzer & Check, LLP, Radnor, PA; John E. Roberts, Proskauer Rose LLP, Boston, MA.

John D. Vandenberg, Klarquist Sparkman, LLP, Portland, OR, argued for defendant-appellee. Also represented by James E. Geringer, Philip J. Warrick, Jeffrey S. Love.

Before NEWMAN, SCHALL, and WALLACH, Circuit Judges.

Opinion

WALLACH, Circuit Judge.

This case is before us on remand from the United States Supreme Court. Biosig Instruments, Inc. (“Biosig”) is the assignee of U.S. Patent No. 5,337,753 (“the '753 patent”), 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. This court found the claims at issue were not invalid for indefiniteness, and reversed and remanded for further proceedings. Nautilus petitioned for certiorari, and the Supreme Court vacated and remanded this court's decision. On remand, we maintain our reversal of the district court's determination that Biosig's patent claims are indefinite.

Background

The facts of this case were recited in detail in this court's previous opinion and need not be repeated in full here. Nautilus, Inc. v. Biosig Instruments, Inc. (Nautilus I ), 715 F.3d 891, 898 (Fed.Cir.2013) In summary, 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. The '753 patent discloses an apparatus preferably mounted on exercise equipment that measures heart rates by, inter alia, processing electrocardiograph

(“ECG”) signals from which electromyogram (“EMG”) signals are substantially removed. Id. col. 1. ll. 36–41. 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....

Id. col. 5 ll. 17–36 (emphases added).

Biosig sued Nautilus for infringement of the '753 patent in August 2004. After several reexamination proceedings, Biosig reinstituted 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. On November 10, 2011, Nautilus moved under Federal Rule of Civil Procedure 56 for summary judgment on two issues: infringement and invalidity for indefiniteness. On February 22, 2012, the district court granted Nautilus's motion, holding the ' 753 patent's “spaced relationship” term as recited in claim 1 was indefinite as a matter of law. The court did not decide the issue of infringement.

On appeal, this court reversed and remanded. Citing precedent, we stated that a claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’ ” Nautilus I, 715 F.3d at 898 (quoting Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed.Cir.2005) ). Under that standard, we determined the '753 patent survived indefiniteness review. Considering the “intrinsic evidence,” we found that it provided “certain inherent parameters of the claimed apparatus, which to a skilled artisan may be sufficient to understand the metes and bounds of ‘spaced relationship.’ ” Id. at 899.

The Supreme Court granted certiorari, ––– U.S. ––––, 134 S.Ct. 896, 187 L.Ed.2d 702 (2014), and, rejecting our “not amenable to construction or insolubly ambiguous” standard, vacated and remanded. Nautilus, Inc. v. Biosig Instruments, Inc. (Nautilus II ), ––– U.S. ––––, 134 S.Ct. 2120, 189 L.Ed.2d 37 (2014). In its decision, the Court articulated the standard to be applied: “[W]e hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty those skilled in the art about the scope of the invention.” Id. at 2124 (emphasis added).

This court has jurisdiction pursuant to 28 U.S.C. § 1295(a)(1) (2012).

Discussion

I. Standard of Review & Legal Framework

A patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.”35 U.S.C. § 112 ¶ 2 (2006).¹ A claim is invalid for indefiniteness if its language, when read in light of the specification and the prosecution history, “fail[s] to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus II, 134 S.Ct. at 2124. We review the district court's indefiniteness determination de novo. Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364, 1370 (Fed.Cir.2014).

A patent is presumed valid under 35 U.S.C. § 282 and, “consistent with that principle, a [fact finder is] instructed to evaluate ... whether an invalidity defense has been proved by clear and convincing evidence.” Microsoft Corp. v. i4i Ltd. P'ship, ––– U.S. ––––, 131 S.Ct. 2238, 2241, 180 L.Ed.2d 131 (2011).

“In the face of an allegation of indefiniteness, general principles of claim construction apply.”

Enzo Biochem, Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed.Cir.2010) (internal quotation marks and citation omitted). “In that regard, claim construction involves consideration of primarily the intrinsic evidence, viz., the claim language, the specification, and the prosecution history.” Id. Though the ultimate construction of a claim term is a legal question reviewed de novo, underlying factual determinations made by the district court based on extrinsic evidence are reviewed for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., –––U.S. ––––, 135 S.Ct. 831, 842, ––– L.Ed.2d –––– (2015). In contrast, “when the district court reviews only evidence intrinsic to the patent (the patent claims and specifications, along with the patent's prosecution history), the judge's determination will amount solely to a determination of law, and the Court of Appeals will review that construction de novo.” Id. at 841.

When a “word of degree” is used, the court must determine whether the patent provides “some standard for measuring that degree.” Enzo Biochem, 599 F.3d at 1332 ; Seattle Box Co., Inc. v. Indus. Crating & Packing, Inc., 731 F.2d 818, 826 (Fed.Cir.1984). Recently, this court explained: “[w]e do not understand the Supreme Court to have implied in [Nautilus II ], and we do not hold today, that terms of degree are inherently indefinite. Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing, 766 F.3d at 1370. Moreover, when a claim limitation is defined in “purely functional terms,” a determination of whether the limitation is sufficiently definite is “highly dependent on context (e.g., the disclosure in the specification and the knowledge of a person of ordinary skill in the relevant art area).” Halliburton Energy Servs., Inc. v. M–I LLC, 514 F.3d 1244, 1255 (Fed.Cir.2008).

Prior to the Supreme Court's decision in this case, a claim was indefinite when it was “insolubly ambiguous” or “not amenable to construction.” Datamize, 417 F.3d at 1347 (internal quotations and citations omitted). In Nautilus II, the Supreme Court observed that § 112, ¶ 2 requires “a delicate balance.” 134 S.Ct. at 2128 (quoting Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 731, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002) ). On one hand, the Court noted, the definiteness requirement must take into account the inherent limitations of language. “Some modicum of uncertainty,” the Court recognized, is the “ ‘price of ensuring the appropriate incentives for innovation.’ ” Id. (quoting Festo Corp., 535 U.S. at 741, 122 S.Ct. 1831 ). On the other hand, the Court explained, a patent must be precise enough to afford clear notice of what is claimed, thereby “appris[ing] the public of what is still open to them. Otherwise there would be a zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.” Id. at 2129 (internal quotation marks and citations omitted). The Court further explained the policy rationale: “absent a meaningful definiteness check ... patent applicants face powerful incentives to inject ambiguity into their claims.” Id.

Balancing these competing interests, the Supreme Court held that “[t]o determine the proper office of the definiteness command, ... we read § 112, ¶ 2 to require that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the...