S reexamine the 753 patent. 6 The PTO confirmed ince the U.S. Supreme - PDF document

Invalidating Patent Claims under Reasonable Certainty Standard By Michael J. Tobin S reexamine the ’753 patent. 6 The PTO confirmed ince the U.S. Supreme Court’s ruling in Nautilus, Inc. v. Biosig Instruments, Inc. , several courts have the patentability of the ’753 patent’s claims and reviewed the indefiniteness of patent claims under Biosig reinstituted its infringement suit in the district court. 7 the new “reasonable certainty” standard. Although it is difficult to gauge the full impact of the changed The district court conducted a Markman hear- standard for indefiniteness, it appears that some ing to determine the proper construction of the types of claim terms are more vulnerable to being ’753 patent’s claims, including the phrase “spaced relationship.” 8 After the conclusion of that hear- found indefinite than others. Patent practitioners can use the recent decisions on indefiniteness to ing, Nautilus moved for summary judgment on the shore up weaknesses in patent applications and grounds that “spaced relationship,” as construed, claims or to exploit potential weaknesses in a com- was indefinite under 35 U.S.C. § 112, second para- graph. 9 The district court granted the motion and petitor’s patent. Biosig appealed the decision to the U.S. Court of Background Appeals for the Federal Circuit. On June 2, 2014, in Nautilus, Inc. v. Biosig On appeal, the Federal Circuit stated that a claim Instruments, Inc. , 1 the Supreme Court altered the is indefinite only when it is “not amenable to con- struction” or “insolubly ambiguous.” 10 Under this standard (or at least the terminology) for indefi- niteness. At issue in the case was U.S. Patent No. standard, the majority determined that the ’753 5,337,753 (’753 patent), which is directed to a heart- patent was not indefinite, and therefore reversed rate monitor for use during exercise. 2 Figure 1 of the the district court’s ruling and remanded the case for further consideration. 11 The Supreme Court ’753 patent shows a perspective view of the claimed heart-rate monitor. granted certiorari and subsequently vacated and The dispute between the parties arose in the remanded the case. 1990s, when Biosig allegedly disclosed the pat- In its Nautilus decision, the Supreme Court ented technology to StairMaster Sports Medical replaced the “amenable to construction” and “insol- Products, Inc. 3 According to Biosig, StairMaster, ubly ambiguous” standards with a “reasonable cer- tainty” standard. 12 Under this standard, a patent “is without ever obtaining a license, sold exercise machines that included Biosig’s patented tech- invalid for indefiniteness if its claims, read in light nology, and Nautilus, Inc., continued to do so of the specification delineating the patent, and the after acquiring the StairMaster brand. 4 In 2004, prosecution history, fail to inform, with reasonable based on these allegations, Biosig brought a pat- certainty, those skilled in the art about the scope of the invention.” 13 Subsequent decisions applying the ent infringement suit against Nautilus in the U.S. District Court for the Southern District of “reasonable certainty” standard have provided some New York. 5 Thereafter, Nautilus requested that guidance for patent practitioners wishing to raise the U.S. Patent and Trademark Office (PTO) indefiniteness challenges on this basis. Terms of Degree Applying the possibly more lenient post- Nautilus Michael J. T obin is an associate at the intellectual property firm of Sughrue Mion, PLLC, assisting clients in building patent standard, some courts have invalidated claims due portfolios, inter partes matters, and general intellectual property to overly subjective claim terms or terms of degree. counseling. Mr. T obin specializes in innovations in the chemical In general, subjective terms are easier to challenge arts and related fields. He may be reached at mtobin@sughrue. than objective ones. Although absolute precision com . Intellectual Property & Technology Law Journal 9 Volume 28 • Number 12 • December 2016

Figure 1 is not required, the definiteness requirement man- Interval’s suggestion, the wallpaper embodiment dates clarity. 14 does not provide a reasonably clear and exclusive For example, in Interval Licensing LLC v. AOL, definition, leaving the facially subjective claim language without an objective boundary.” 20 Citing Inc. , several claims from two patents owned by Interval Licensing LLC were found invalid as Nautilus , the court also declined to “cull out a sin- indefinite. 15 The patents were directed to an atten- gle ‘e.g.’ phrase from a lengthy written description tion manager for a display device and included to serve as the exclusive definition of a facially sub- jective claim term.” 21 Rather, the court noted that the limitation that content was to be displayed “in an unobtrusive manner that does not distract a “Had the phrase been cast as a definition instead of from a primary interaction.” 16 The Federal user … as an example—if the phrase had been preceded by Circuit held that “unobtrusive manner” failed to ‘i.e.’ instead of ‘e.g.’—then it would help provide the clarity that the specification lacks.” 22 inform those skilled in the art about the scope of the invention with reasonable certainty. 17 In a subsequent decision, Icon Health & Fitness, In its decision, the court stated that “unobtrusive Inc. v. Polar Electro Oy , the Federal Circuit again manner” was a term of degree, and acknowledged found that subjective claim terminology rendered the patent invalid for indefiniteness. 23 In Icon , the that the Nautilus decision does not imply that terms of degree are inherently indefinite. 18 The court claims in suit related to an exercise and health sys- continued that “Claim language employing terms tem including computerized equipment capable to of degree has long been found definite where it provide feedback and encouragement to the user provided enough certainty to one of skill in the (i.e., a virtual personal trainer). Of importance, the art when read in the context of the invention” claims recited the terms “in-band communication,” and “Although absolute or mathematical precision “out-of-band communication,” and “a relationship” between these communications. 24 is not required, it is not enough, as some of the language in our prior cases may have suggested, to Based on the intrinsic record and substantial identify ‘ some standard for measuring the scope of expert testimony from both parties, the district ” 19 In making the foregoing statements, the phrase.’ court concluded that those skilled in the art the court denounced Appellant’s reliance on case understand that the terms “in-band” and “out-of- law applying the old standards of “amenable to band” are relative terms, and only have meaning in construction” and “insolubly ambiguous,” which a given context with a defined reference, such as were replaced by Nautilus . a frequency, a channel, a protocol, time slots, and data streams. 25 The Federal Circuit affirmed the The court concluded that, after review of the specification and prosecution history, “the ‘unob- district court’s holding and added that “in-band” trusive manner’ phrase has too uncertain a rela- and “out-of-band” cannot provide a basis for one another. 26 That is, even though there was a recited tionship to the patents’ embodiments. Contrary to 10 Intellectual Property & Technology Law Journal Volume 28 • Number 12 • December 2016