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Patent case gives US justices a workout

In a case that could clarify the specificity with which patent holders must describe their inventions, the justices of the U.S. Supreme Court and the attorneys arguing the case of Nautilus Inc. v. Biosig Instruments Inc., No. 13-369, had a tough time finding the right words to articulate a standard.

The case stems from a patent on a heart rate monitor for workout equipment held by Biosig. The patent claim, which describes the technical terms of the patent, included the term “spaced relationship” to describe the nodes in the handles of the device which monitor a user’s heart rate when his or her hands are pressed against them. But the claim did not offer details such as how and at what distance the nodes are to be spaced.

Biosig sued Nautilus claiming that Biosig disclosed the patented technology to Nautilus’ successor-in-interest. Rather than licensing the technology, Biosig alleged, the company began manufacturing their own devices based on the patented technology.

Nautilus moved for summary judgment, arguing that the “spaced relationship” language in the patent claim was ambiguous and therefore invalid due to the requirement in §112 of the Patent Act that claims be particular and distinct. The district court agreed and granted Nautilus’ motion.

But the Federal Circuit Court of Appeals reversed, holding that patent claims may be invalided as indefinite only when they are “insolubly ambiguous,” meaning that “reasonable efforts at claim construction result in a definition that does not provide sufficient particularly and clarity to inform skilled artisans of the bounds of the claim.”

Nautilus sought and was granted Supreme Court review.

Defining ‘spaced relationship’

John Vandenberg, a partner in the Portland, Ore., office of Klarquist Sparkman LLP, argued on behalf of Nautilus that ambiguous claims like Biosig’s stifle competition and lead to costly litigation because they make it too hard for innovators to determine what existing patents cover.

Such claims “defeat the public notice function which is at the heart of §112,” he said.

The Federal Circuit’s standard, he argued, is therefore at odds with the Patent Act’s requirement that claims be particular and distinct, because it would allow for alternative interpretations.

Justice Sonia Sotomayor pointed out that just about anything, including the interpretation of patent claims, can result in reasonable minds differing.

“We as Justices disagree on the meaning of things all the time,” she said. “Would we have any valid patents [if] the standard that we adopt [is] if any judge on a panel thinks that there’s another interpretation, that that’s sufficient to invalidate a patent as indefinite?”

Vandenberg said the court wouldn’t have to go that far.

“The patent on its face is grammatically ambiguous,” he said.

Mark Harris, a partner in the New York office of Proskauer Rose LLP, argued on Biosig’s behalf that the patent was definite and clear enough to be infringed upon.

“There was uncontested evidence that a skilled artisan in 1992 was able to read this patent and understand how to put together this invention,” Harris argued.

Justice Stephen Breyer tried to determine exactly how the “spaced relationship” of the patent at issue worked.

“So suppose there are two kinds of electrodes, a blue one and a green one” in each handle, Breyer said, demonstrating with his fists. “You can’t let them touch. … One hand is like this, the other hand like this. Does it work or not?”

“I don’t know,” Harris admitted.

“The point [is] when I read it, it just seems to me that the green [node] can’t touch the blue one, and the whole thing has to fit within your hand,” Breyer said. As for the required distance between the nodes, “this document doesn’t tell us.”

“This court has never found a problem with the need for some amount of experimentation in order to get the parameters exactly right,” Harris replied.

Curtis Gannon, assistant to the U.S. solicitor general arguing in support of Biosig, offered another standard: whether “a person of ordinary skill in the art would reasonably understand the scope of the claim.”

When Justice Antonin Scalia asked what would happen if there were multiple reasonable interpretations, Gannon said the most reasonable interpretation would prevail.

“The test you’re giving us is not much of a test,” Scalia said. “It says, ‘so long as there is a right answer, everything else is wrong.”

A decision is expected later this term.

About KIMBERLY ATKINS, BridgeTower Media Newswires

Kimberly Atkins is the Washington bureau chief for the Wisconsin Law Journal and its sister publications. She can be reached at kimberly.atkins@lawyersweekly.com.

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