Precedential Patent Case From the Federal Circuit in the Past Week
Biosig – On remand from the Supreme Court,the Circuit attempts to determine if, applying the new "reasonable certainty" standard instead of its prior "insolubly ambiguous" test, a different result should be reached in examining whether "spaced relationship" is sufficiently definitive under section 112. The Circuit concludes that the result should be the same, ruling that the claims are sufficiently clear to one with skill in the art. In so ruling, the Circuit seems to suggest there should be little difference in the indefiniteness analysis.
Biosig Instruments, Inc. v. Nautilus, Inc. ,
Fed. Cir. Case No. 2012-1289 (April 27, 2015)
This case comes back to the Circuit on remand from the Supreme Court. The district court granted summary judgment of invalidity based upon the claims being indefinite, ruling that Biosig's patent's "spaced relationship" term was indefinite as a matter of law. The Circuit reversed, finding that the term was not "insolubly ambiguous." Considering the "intrinsic evidence," the Circuit found that a skilled artisan may understand the metes and bounds of "spaced relationship."
The Supreme Court rejected the Circuit's "not amenable to construction or insolubly ambiguous" standard, and articulated the new indefiniteness standard as "a patent is invalid for indefiniteness if its claim, 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."
The panel, comprised of Judges Newman, Schall and Wallach, who also heard the first appeal, first reviews the prior standard for indefiniteness, the standards of review for district courts and the Federal Circuit, and the presumptions of validity afforded to patents. Turning to the new standard, the panel explains that it did "not understand the Supreme Court to have implied… 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 on the context of the invention." Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014) (decided after the Supreme Court's decision).
The panel states that the Supreme Court emphasized that the definiteness requirement must take into account the inherent limitations of language and that "some modicum of uncertainty" is the "price of ensuring the appropriate incentives for innovation." The Supreme Court also stated that a patent must be precise enough to "apprise 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."
Balancing these interests, the Supreme Court issued its "reasonable certainty" standard. The panel finds that this standard isn't new, but quite familiar to the Supreme Court and is "the core of the common law." Specifically, the panel noted that the "reasonable certainty" standard had been in use for nearly two hundred years: from Fifth Amendment takings cases ( Kelo v. City of New London, 545 U.S. 469 (2005)) to the bedrock of negligence law ( Palsgraf v. Long Island R.R. Co., 162 N.E. 99 (N.Y. 1928)); from copyright damages ( Sheldon v. Metro-Goldwyn Pictures Corp., 309 U.S. 390(1940)) to trademark and patent damages ( Hamilton-Brown Shoe Co. v. Wolf Bros. & Co., 240 U.S. 251(1916), and likely everything in between. This familiarity with a "reasonable certainty" may have been behind the panel's remark that this "new" standard is a "bright star" from which the Federal Circuit may now steer "rather than the unreliable compass of ‘insoluble ambiguity.'"
"Reasonable Certainty" in Application
The sole issue presented for discussion this second time is whether the district court erred in holding the patent invalid for indefiniteness. The Supreme Court expressed no opinion on the validity of Biosig's patent, but rather instructed the Circuit "to decide the case employing the standard we have prescribed." The patent discloses an apparatus preferably mounted on exercise equipment that measures heart rates. Claim 1 recites, in relevant part: "1. A heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures, comprising … a first live electrode and a first common electrode mount on said first half in spaced relationship with each other."
Noting that its prior analysis primarily relied on intrinsic evidence and found the "extrinsic evidence underscores the intrinsic evidence," the panel revisits the intrinsic evidence under the new "reasonable certainty" standard. The panel concludes that the intrinsic evidence demonstrates that a "skilled artisan would be able to determine this language requires the spaced relationship to be neither infinitesimally small nor greater than the width of a user's hands."
The panel also delves into its previous review of the prosecution history, including a declaration from the inventor of the patent, to support its repeated finding of definiteness. In its earlier ruling the panel found that the prosecution history showed that the claimed heart rate monitor as recited in claim 1 provided the basis for overcoming the PTO's rejections during reexamination. There, as here, the panel found that the recitation of this function in claim 1 is highly relevant to ascertaining the proper bounds of the "spaced relationship" between the live and common electrodes. And the panel again relies on the inventor's testimony to find that when "configuring the claimed heart rate monitor, skilled artisans can determine the ‘spaced relationship' between live and common electrodes by calculating the point in which EMG signals are substantially removed."
In conclusion, the panel once again finds that "spaced relationship" is not indefinite. In doing so, it specifically found that it did "not run afoul of the innovation-discouraging ‘zone of uncertainty' against which the Supreme Court has warned, and to the contrary, informs a skilled artisan with reasonable certainty of the scope of the claim."
Comments: It appears from this opinion that the Circuit sees little difference between the "reasonable certainty" and "insolubly ambiguous" tests. The panel spends little time reviewing the record outside of block-quoting its previous reasoning and examination, and reaches the very same result. There is little discussion of any arguments made by parties applying the new standard.
I'll leave it up to the reader to decide whether the panel is mocking the Court when it refers to the Supreme Court's opinion and says: "The Court has accordingly modified the standard by which lower courts examine allegedly ambiguous claims; we may now steer by the bright star of ‘reasonable certainty,' rather than the unreliable compass of ‘insoluble ambiguity.'" Precedential Patent Case From the Federal Circuit in the Past Week