How specific and clear must a patent be to balance the Patent Act’s purposes of (1) protecting inventors and the public and (2) avoiding excess costs and litigation?
Since the 1990s, Nautilus and Biosig Instruments have had a series of patent disputes. Their current dispute involves a new model of heart rate monitors mounted onto exercise equipment. Nautilus contends that Biosig’s patent is indefinite as a matter of law and therefore invalid. Further, Nautilus argues that patents must provide sufficiently clear notice to protect the public, promote innovation, and reduce costs to the judicial system. Biosig counters that its patent is valid because it is sufficiently clear and specific to meet the standards of definiteness set by precedent. Biosig further argues that a patent should be broad enough to protect innovators and their still-developing products. The Federal Circuit held that Biosig’s patent was valid because it was not “insolubly ambiguous.” The Supreme Court’s decision will impact the requirements inventors and drafters must meet to patent new technologies.
Questions as Framed for the Court by the Parties
- Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming?
- Does the presumption of validity dilute the requirement of particular and distinct patent claiming?
- Whether a patent claim is invalid for indefiniteness where the traditional tools of claim construction establish its meaning, simply because lawyers may devise other interpretations, years after issuance, that are not “outlandish” or “implausible”?
- Whether an accused infringer challenging a patent claim as indefinite may overcome the statutory presumption of validity, 35 U.S.C § 282(a), without introducing any evidence that a person skilled in the art would have been unable to understand the claim’s meaning?
Biosig Instruments, Inc. and Nautilus, Inc. have had an ongoing dispute since the late 1990s, when Nautilus’ predecessor, StairMaster Company, began selling exercise equipment that Biosig claims infringes its patented technology. See Biosig Instruments, Inc. v. Nautilus, Inc., 715 F.3d 891, 895–96 (Fed. Cir. 2013). Biosig holds U.S. Patent No. 5,337,753 (“the ’753 patent”). See id. at 893. The ‘753 patent protects a heart rate monitor mounted onto exercise equipment. See id. at 895. The patent purportedly improves upon previous models by more accurately measuring heart rate. See id. at 894.
In 2004, Biosig brought a patent infringement suit against Nautilus claiming that Nautilus had infringed claims 1 and 11 of the ’753 patent. See id. at 896. During the litigation, Nautilus twice asked the United States Patent and Trademark Office (“PTO”) to reexamine the ’753 patent. See id. These requests were based on U.S. Patent No. 4,444,200 (“Fujisaki”). See id. After the first reexamination, the PTO rejected claim 1 as anticipated by Fujisaki and claim 11 as obvious over Fujisaki given other prior art references. See id.
After the second reexamination of the ’753 patent, the PTO ultimately confirmed its patentability. See id. Thereafter, Biosig reinstituted its patent infringement action against Nautilus. In November 2011, Nautilus moved for summary judgment, arguing non-infringement and that Biosig’s patent was invalid for indefiniteness. See id.
The U.S. District Court for the Southern District of New York denied Nautilus’ motion for summary judgment on non-infringement on the grounds that the parties had not completed enough discovery to warrant dismissal. See id. at 896–97. However, the district court granted Nautilus’ motion to dismiss on the invalidity claim, holding that the ’753 patent’s “spaced relationship” term from claim 1 was indefinite as a matter of law. See id. at 897.
Nautilus filed a third request for reexamination of the ’753 patent with the PTO after the parties submitted their summary judgment briefs but before the hearing. See id.The PTO denied this request, finding that there were no new questions of patentability raised in the request. See id.In response, Biosig asked the district court to reconsider its decision on the motion for summary judgment in light of the PTO’s decision. See id. The district court denied the request. See id.
On appeal from the district court’s opinion, the Federal Circuit reversed the district court’s motion to dismiss based on invalidity, stating that the patent was not “insolubly ambiguous.” See id. at 899, 904. The Supreme Court granted certiorari.
Nautilus argues that the Patent Act serves two primary purposes: (1) to protect the public by providing clear notice of a patent’s scope and to promote innovation, and (2) to ensure that the costs of proving patentability remain with the party seeking the patent. See Brief for Petitioner, Nautilus, Inc. at 27, 33. Biosig argues that a certain degree of indefiniteness is necessary to reward inventors for their efforts and to protect them from litigation. See Brief for Respondent, Biosig Instruments, Inc. at 22, 48. The Supreme Court’s resolution of this case may impact the standard for patent claim indefiniteness and the level of specificity a patentee must satisfy before receiving a patent.
Protecting the public and promoting innovation
Nautilus argues that the primary purpose of the Patent Act is to provide clear notice of a patent’s scope. See Brief for Petitioner at 27. Nautilus and supporting amici explain that clear notice prevents patentees from making vague and overly broad patent requests. See id. at 30; Brief of Amicus Curiae Yahoo! Inc. in Support of Reversal at 13. Such patents, they argue, create a “zone of uncertainty” that discourages innovation by other entities. See Brief for Petitioner at 29; Brief of Amici Curiae Nova Chemicals Inc., et al. in Support of Petitioner at 18. Nautilus argues that if inventors are allowed to make ambiguous patent claims, it will be harder for other innovators to know what is and is not already patented. See Brief for Petitioner at 29. Nautilus argues that, because potential innovators fear the costs of uncertainty and litigation, this will lead to a chilling effect on innovation altogether. See id. at 30. According to Nautilus and its supporters, this situation would entirely undermine the purpose of the Patent Act to promote innovation. See Brief for Petitioner at 32–33; Brief of Amici Curiae Amazon.com, Inc., et al. in Support of Petitioner at 5.
Biosig responds that although one purpose of the Patent Act is to give the public notice of where innovation is legally permitted, another purpose is to reward the inventor for his work. See Brief for Respondent at 22; Brief of Amicus Curiae the American Bar Association (“ABA”) in Support of Neither Party at 13–14. As such, the Supreme Court’s precedent recognizes a strong presumption in favor of protecting the validity of the patent. See Brief for Respondent at 38. Furthermore, Biosig notes that in its decisions, the Court has held that the reasonableness standard in the Patent Act is based on what a person skilled in the relevant art would understand. See id. at 22–23. Additionally, Biosig argues that indefiniteness is a necessary feature in patent applications to allow industry to work on technologies with functions that are still developing. See id. at 25–26; Brief Amicus Curiae Professor Peter S. Menell in Support of Neither Party at 10.
Burden and Cost shifting
Nautilus notes that another purpose of the Patent Act is to enable courts and the PTO to determine whether an innovation is patentable. See Brief for Petitioner at 33. Nautilus argues that because there are millions of valid patents at any given time, it can be very cumbersome and costly for courts to determine whether an invention is novel and patentable. See id. at 34. As such, Nautilus and its supporters argue that by requiring patent seekers to clearly distinguish their innovations and bear the burden of doing the research on patentability upfront, courts and the PTO can save valuable resources. See id. at 33; Brief of Amicus Curiae AARP in Support of Petitioners at 9; Brief of Amazon at 12. For Nautilus, this is particularly reasonable given that the inventor, who knows his invention best, is in the best position to prevent ambiguities in the patent claim. See Brief for Petitioner at 44; Brief of Amici Curiae Electronic Frontier Foundation and Public Knowledge in Support of Petitioner at 5.
Biosig argues that if the Court rules in favor of Nautilus, infringers will be incentivized to frustrate courts’ role in construing patent claims, which will only increase litigation. See Brief for Respondent at 48; Brief of ABA at 19. Specifically, Biosig argues that if the Court adopts Nautilus’ rule for patent specificity, litigation will increase See Brief for Respondent at 48. Biosig contends that a party sued for infringement would waste court resources by challenging the precision of every aspect of the patent. See id.The result, Biosig claims, would be “more prevalent and more labored” patent litigation. See id.
The issue before the Court is the validity of Biosig’s patent. Nautilus argues that the Biosig patent is invalid for ambiguity. See Brief for Petitioner at 22. Biosig maintains, however, that a patent claim need not be perfect; it merely needs to be reasonably clear to inform one skilled in the relevant art of its meaning. According to Biosig, the patent in question meets that standard. See Brief for Respondent at 20–21.
THE TEXT AND PURPOSES OF THE PATENT ACT
Nautilus’s argument begins by looking at the text of the Patent Act. Natulus explains that, under the Act, applicants are required to submit a “specification” which defines the scope of the applicant’s purported invention. See Brief for Petitioner at 22–23. The first part of the specification is a written description of the invention. See id.at 23. The second part, which lies at the heart of this case, requires an applicant to “particularly point out and distinctly claim” the subject matter of the invention. See id.According to Nautilus, the Act’s requirement that a patent claim be “particular” and “distinct” means that any ambiguous claims—claims which are susceptible to more than one reasonable interpretation—are expressly void under the law. See id. at 23–25. Nautilus contends that whether a patent claim is ambiguous ought to be determined by the objective standard of one “skilled in the relevant art.” See id. at 26. Thus, according to Nautilus, if someone skilled in the art covered by the patent cannot clearly discern from the application what single invention the patent actually covers, then the claim is ambiguous and, in turn, void under the Patent Act. See id.
According to Biosig, however, in order to meet the “definiteness” requirement of the Patent Act, a patent claim only needs to be able to convey to one skilled in the relevant art the “metes and bounds” of the patent; it does not need to exactly describe the precise invention in question. See Brief for Respondent at 22–23. In support of its contention, Biosig argues that language is inherently limited and cannot be expected to perfectly describe every new invention, and that the very nature of certain inventions may necessitate using language that on its face appears ambiguous, but which in context is reasonably clear to one skilled in the relevant art. See id.at 23–26.
Biosig maintains, moreover, that the Court has had to develop a series of rules that are used in construing patents when disputes arise since it is not always possible to set out in the patent claim every imaginable way an invention may be enabled. See Brief for Respondentat 26–30. Biosig points as an example to the so-called “doctrine of equivalents,” under which patent infringement may be found even if the infringing product does not violate the literal terms of the patent claim, as long as the infringing element is somehow “equivalent” in manner. See id.at 26. Hence, Biosig argues, uncertainty in a patent claim does not render that claim invalid per se; rather, courts will endeavor to interpret the patent in the most coherent manner possible. See id.
Nautilus relies on what it classifies as a long history in the Supreme Court of interpreting the Patent Act to protect the public by requiring that patent claims clearly delimit the boundaries of their inventions. See Brief for Petitioner at 27. According to Nautilus, if a patent claim is so ambiguous that it could plausibly cover a range of inventions, then other inventors will be discouraged from creating new inventions that might infringe the ambiguous patent. See id.at 27–33. In turn, the cost of liability for patent infringement, plus the cost of defending oneself in an infringement suit is too high, according to Nautilus, for the public to risk possibly infringing a patent. See id.Accordingly, Nautilus argues that Congress purposely required applicants to clearly define the boundaries of their patents so that others could confidently work around them. See id.To serve the public interest, then, Nautilus asserts that patent claims must be clear and precise so that innovation and progress are not unnecessarily stifled. See id.Moreover, Nautilus argues that clearly defined patent claims assist courts in interpreting patents. See id.at 33–34.
According to Nautilus, the lower court’s opinion in this case directly undermines Congress’s purpose in enacting the Patent Act. See Brief for Petitioner at 37–47. The Federal Circuit held that a patent claim is invalid only when it is not “amenable to construction” or when, after an attempt at construing the claim, it is found to be “insolubly ambiguous,” meaning that attempts at defining the patent claim do not provide any meaningful understanding of its bounds. See id.at 37–38. Nautilus argues that this standard deprives the public of the benefit of a clearly defined patent claim at the time it is written, and instead allows courts to determine the boundaries of a patent perhaps years after its issuance. See id.at 38–39. Nautilus contends that such uncertainty is directly contrary to the Patent Act’s purpose and Supreme Court precedent. See id.
Biosig counters, however, that Nautilus’ interpretation of the standard for specifying claims is entirely unworkable. Biosig argues that under Nautilus’ proposed test, a claim is per se invalid if it is susceptible to more than one reasonable interpretation. See Brief for Respondent at 34–35. Biosig contends that this stark rule flies in the face of historical practice, and that courts have routinely interpreted patents despite reasonable disputes about their meaning. See id.at 40. Indeed, Biosig argues, the Court held in Markman v. Westview Instrument, Inc. that claim construction is for judges, not juries, because of the inherent difficulties involved in that process. See id.at 29–30, 40–41. Markman, according to Biosig,sets out a process for ascertaining the meaning of patent claims and implicitly recognizes that a claim is not invalid simply for being ambiguous. See id.Rather, Biosig argues, claims with competing interpretations are construed by judges. See id.If Nautilus’s interpretation of the Patent Act were to prevail, Biosig argues, the delicate balance Congress struck between rewarding innovation and encouraging new inventions would be destroyed. See id.at 47–48.
APPLICATION OF THE LAW TO THE PATENT IN THIS CASE
Nautilus maintains that whether Biosig’s patent claim was sufficiently “particular” and “distinct” is a question of law that the Court can and should decide. See Brief for Petitioner at 39–43, 47. Nautilus points out that the majority and concurring opinions issued by the Federal Circuit state that the patent in question is susceptible to more than one reasonable interpretation. See id.at 47–48. In Nautilus’s view, this shows that the patent at issue does not meet the Patent Act’s “particular” and “distinct” requirements. See id.at 47–50.
Biosig counters that if a patent claim can be construed in two possible ways, then a court should adopt whatever construction will uphold the patent rather than invalidate it. See Brief for Respondent at 38. According to Biosig, this is consistent with the principle that the law should seek to avoid forfeitures; that is, rules that cause a party to lose all of its rights are disfavored. See id.at 39. Thus, the fact that a patent may be susceptible to more than one reasonable interpretation does not mean that it is void. Rather, courts will attempt to interpret the patent in a manner that seeks to preserve the patentee’s legal rights. See id.at 39–41. Under that rule, Biosig maintains that the patent in this case should be upheld. See id.at 50–54. Moreover, Biosig points to the presumption of validity afforded to patents—it is the responsibility of the party challenging the patent to demonstrate that its invalidity. See id.at 54–56. According to Biosig, Nautilus has failed to overcome its burden in proving that the patent here is invalid. See id.
In this case, the Court will consider whether a patent held by Biosig is valid under the Patent Act. Nautilus maintains that the patent is invalid because it is ambiguous and thus violates the Patent Act’s requirement that patent claims be “distinct” and “particular.” Biosig contends that a patent claim only needs to be reasonably clear to inform one skilled in the relevant art of its meaning, and that the patent in question clearly meets this standard. In deciding this case the Court will construe § 112 of the Patent Act and determine what is required in the specification of a patent claim. The Court’s decision will impact how patent claims are drafted, how they are reviewed by the Patent and Trademark Office, and how courts will construe them in litigation.
- Dennis Crouch, Is “Insolubly Ambiguous” the Correct Standard for Indefiniteness?, Patently-O, Sept. 21, 2013.
- Ryan Davis, High Court Told Tighter Rules Needed on Ambiguous Patents, Law360, Mar. 3, 2014.