Already another month has passed, and it’s about time for another update. Earlier I mentioned some other patent cases the Supreme Court recently decided and how I should talk a little bit about them. At the end of April the Court handed down two decisions both unanimously reversing and remanding the appeals court. For now I will talk about one of them, Nautilus v. Biosig, that dealt with the construction of claims in a patent and opine on the logic behind the patent prosecution process.
This case deals with the definiteness of the language of a claim. When you file a patent, it needs to disclose what is the actual invention. The disclosure explains what the invention is and how it works, and the claims are what the government will actually grant to be enforced as a limited monopoly in exchange for disclosure to the public. In this case, Biosig claimed patent 5337753, a heart rate monitor to be used inside a handlebar of a fitness machine. Biosig sued Nautilus because Nautilus had bought out the StairMaster brand and had sold StairMaster exercise machines with heart rate monitors without StairMaster ever obtaining a license for the ’753 patent. The sticking point was that the companies disagreed on how to interpret the claim talking about the electrodes being “in spaced relationship with each other.” As a settled rule, the claims need to actually describe the relationship so that someone skilled in the art can use the claims and the supporting disclosure to actually practice the invention. If there is not enough evidence to disclose to the public about how the invention works, then the claim is rendered indefinite and cannot be enforced against a potential infringing party.
While the appeals court found that Biosig had met its burden in defining the claims, the Supreme Court applied more stringent standards and ruled that the “spaced relationship” was not explained enough for the patent to be enforced. The appeals court agreed that the spacing was not intrinsically explained in the claims as a specific distance between the electrodes. However, the distance could still be figured out because the patent talks about other limitations like detecting electric signals at two different points on the hand, and as a practical matter the distance has a lower limit because if that did not exist then there would be no space between electrodes. The inventor’s declarations on the technology was enough to show that, with enough experimentation, a person skilled in the art could figure out what the spaced relationship actually is. The Supreme Court found this interpretation of claim language too loose for the purposes of law and public policy. While language has its limits and should not force the claims to be too narrow to allow for protection of the invention and incentive for innovation, the claim should be specific enough so that the public should understand what is disclosed in general so that competition can experiment with alternatives that do not infringe but still compete in the marketplace. The Court considered the appeals court’s test of the claims being “amenable to construction” or “insolubly ambiguous” as too confusing for the lower courts to apply a standard across subject matters in claims construction. To limit confusion, the Supreme Court ordered the appeals court to reevaluate the definiteness of the claims with a more stringent standard, keeping the issue in litigation for some time to come.
When the Supreme Court issued its unanimous decision, it was trying to demonstrate that the appeals court needs a higher standard in evaluating patent claims. Patents need to contain enough information that the public can figure out what is disclosed in the invention, and the claims need to be specific enough for people skilled in the art of the invention to know its limits and what can compete with the invention without infringing the patent. Hopefully the decision in Nautilus v. Biosig will lead to better written patent claims that do not require extended patent prosecution in the form of reexamination or patent litigation in the form of lawsuits. While that is being worked on I think I will hit the gym and burn some calories by exerting myself on an exercise machine.
SCOTUS Blog Link
Supreme Court opinion