Nautilus, Inc. v. Biosig Instruments, Inc.

• Court: U.S. Supreme Court
• Writing for the Court: Justice GINSBURG delivered the opinion of the Court.
• Citation: Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 189 L. Ed. 2d 37, 572 U.S. 898 (2014)
• Decision Date: 02 June 2014
• Docket Number: No. 13–369.,13–369.
• Parties: NAUTILUS, INC., Petitioner v. BIOSIG INSTRUMENTS, INC.

572 U.S. 898

134 S.Ct. 2120

189 L.Ed.2d 37

NAUTILUS, INC., Petitioner

v.BIOSIG INSTRUMENTS, INC.

No. 13–369.

Supreme Court of the United States

Argued April 28, 2014.

Decided June 2, 2014.

John D. Vandenberg, Portland, OR, for Petitioner.

Mark D. Harris, New York, NY, for Respondent.

Curtis E. Gannon, for the United States as amicus curiae, by special leave of the Court, supporting the Respondent.

Thomas G. Hungar, Matthew D. McGill, Jonathan C. Bond, Gibson, Dunn & Crutcher LLP, Washington, D.C., James E. Geringer, Jeffrey S. Love, John D. Vandenberg, Counsel of Record, Philip Warrick, Klarquist Sparkman, LLP, Portland, OR, for Petitioner.

Sean M. Handler, Daniel C. Mulveny, Kessler, Topaz, Meltzer & Check LLP, Radnor, PA, Mark D. Harris, Counsel of Record, James H. Shalek, Celia V. Cohen, Proskauer Rose LLP, New York, NY, Steven M. Bauer, John E. Roberts, Anthony H. Cataldo, Jinnie Reed, Proskauer Rose LLP, Boston, MA, for Respondent.

Justice GINSBURG delivered the opinion of the Court.

The Patent Act requires that a patent specification "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 ed.) (emphasis added). This case, involving a heart-rate monitor used with exercise equipment, concerns the proper reading of the statute's clarity and precision demand. According to the Federal Circuit, a patent claim passes the § 112, ¶ 2 threshold so long as the claim is " amenable to construction," and the claim, as construed, is not "insolubly ambiguous." 715 F.3d 891, 898–899 (2013). We conclude that the Federal Circuit's formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement. In place of the " insolubly ambiguous" standard, we 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. Expressing no opinion on the validity of the patent-in-suit, we remand, instructing the Federal Circuit to decide the case employing the standard we have prescribed.

I

Authorized by the Constitution "[t]o promote the Progress of Science and useful Arts, by securing for limited Times to ... Inventors the exclusive Right to their ... Discoveries," Art. I, § 8, cl. 8, Congress has enacted patent laws rewarding inventors with a limited monopoly. "Th[at] monopoly is a property right," and "like any property right, its boundaries should be clear." Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 730, 122 S.Ct. 1831, 152 L.Ed.2d 944 (2002). See also Markman v. Westview Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) ("It has long been understood that a patent must describe the exact scope of an invention and its manufacture...."). Thus, when Congress enacted the first Patent Act in 1790, it directed that patent grantees file a written specification "containing a description ... of the thing or things ... invented or discovered," which "shall be so particular" as to " distinguish the invention or discovery from other things before known and used." Act of Apr. 10, 1790, § 2, 1 Stat. 110.

The patent laws have retained this requirement of definiteness even as the focus of patent construction has shifted. Under early patent practice in the United States, we have recounted, it was the written specification that "represented the key to the patent." Markman, 517 U.S., at 379, 116 S.Ct. 1384. Eventually, however, patent applicants began to set out the invention's scope in a separate section known as the "claim." See generally 1 R. Moy, Walker on Patents § 4.2, pp. 4–17 to 4–20 (4th ed. 2012). The Patent Act of 1870 expressly conditioned the receipt of a patent on the inventor's inclusion of one or more such claims, described with particularity and distinctness. See Act of July 8, 1870, § 26, 16 Stat. 201 (to obtain a patent, the inventor must "particularly point out and distinctly claim the part, improvement, or combination which [the inventor] claims as his invention or discovery").

The 1870 Act's definiteness requirement survives today, largely unaltered. Section 112 of the Patent Act of 1952, applicable to this case, requires the patent applicant to conclude the specification with "one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112, ¶ 2 (2006 ed.). A lack of definiteness renders invalid "the patent or any claim in suit." § 282, ¶ 2(3).¹

II

A

The patent in dispute, U.S. Patent No. 5,337,753 ('753 patent), issued to Dr. Gregory Lekhtman in 1994 and assigned to respondent Biosig Instruments, Inc., concerns a heart-rate monitor for use during exercise. Previous heart-rate monitors, the patent asserts, were often inaccurate in measuring the electrical signals accompanying each heartbeat (electrocardiograph or ECG signals). The inaccuracy was caused by electrical signals of a different sort, known as electromyogram or EMG signals, generated by an exerciser's skeletal muscles when, for example, she moves her arm, or grips an exercise monitor with her hand. These EMG signals can "mask" ECG signals and thereby impede their detection. App. 52, 147.

Dr. Lekhtman's invention claims to improve on prior art by eliminating that impediment. The invention focuses on a key difference between EMG and ECG waveforms: while ECG signals detected from a user's left hand have a polarity opposite to that of the signals detected from her right hand,² EMG signals from each hand have the same polarity. The patented device works by measuring equalized EMG signals detected at each hand and then using circuitry to subtract the identical EMG signals from each other, thus filtering out the EMG interference.

As relevant here, the '753 patent describes a heart-rate monitor contained in a hollow cylindrical bar that a user grips with both hands, such that each hand comes into contact with two electrodes, one " live" and one "common." The device is illustrated in figure 1 of the patent, id., at 41, reproduced in the Appendix to this opinion.

Claim 1 of the '753 patent, which contains the limitations critical to this dispute, refers to a "heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures." Id., at 61. The claim "comprise[s]," among other elements, an "elongate member" (cylindrical bar) with a display device; "electronic circuitry including a difference amplifier"; and, on each half of the cylindrical bar, a live electrode and a common electrode "mounted ... in spaced relationship with each other." Ibid.³ The claim sets forth additional elements, including that the cylindrical bar is to be held in such a way that each of the user's hands "contact[s]" both electrodes on each side of the bar. Id., at 62. Further, the EMG signals detected by the two electrode pairs are to be "of substantially equal magnitude and phase" so that the difference amplifier will "produce a substantially zero [EMG] signal" upon subtracting the signals from one another. Ibid.

B

The dispute between the parties arose in the 1990's, when Biosig allegedly disclosed the patented technology to StairMaster Sports Medical Products, Inc. According to Biosig, StairMaster, without ever obtaining a license, sold exercise machines that included Biosig's patented technology, and petitioner Nautilus, Inc., continued to do so after acquiring the StairMaster brand. In 2004, based on these allegations, Biosig brought a patent infringement suit against Nautilus in the U.S. District Court for the Southern District of New York.

With Biosig's lawsuit launched, Nautilus asked the U.S. Patent and Trademark Office (PTO) to reexamine the '753 patent. The reexamination proceedings centered on whether the patent was anticipated or rendered obvious by prior art—principally, a patent issued in 1984 to an inventor named Fujisaki, which similarly disclosed a heart-rate monitor using two pairs of electrodes and a difference amplifier. Endeavoring to distinguish the '753 patent from prior art, Biosig submitted a declaration from Dr. Lekhtman. The declaration attested, among other things, that the '753 patent sufficiently informed a person skilled in the art how to configure the detecting electrodes so as "to produce equal EMG [signals] from the left and right hands." Id., at 160. Although the electrodes' design variables—including spacing, shape, size, and material—cannot be standardized across all exercise machines, Dr. Lekhtman explained, a skilled artisan could undertake a "trial and error" process of equalization. This would entail experimentation with different electrode configurations in order to optimize EMG signal cancellation. Id., at 155–156, 158.⁴

In 2010, the PTO issued a determination confirming the patentability of the '753 patent's claims.

Biosig thereafter reinstituted its infringement suit, which the parties had voluntarily dismissed without prejudice while PTO reexamination was underway. In 2011, the District Court conducted a hearing to determine the proper construction of the patent's claims, see Markman v. Westview Instruments, Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577 (1996) (claim construction is a matter of law reserved for court decision), including the claim term "in spaced relationship with each other." According to Biosig, that " spaced relationship" referred to the distance between the live electrode and the common electrode in each electrode pair. Nautilus, seizing on Biosig's submissions to the PTO during the reexamination, maintained that the "spaced relationship" must be a distance "greater than the width of each electrode." App. 245. The District Court ultimately construed the term to mean "there is a defined relationship between the live...