Biosig Instruments, Inc., v. Nautilus, Inc., No. 2012-1289, 2015 U.S. App. LEXIS 6851 (Fed. Cir. Apr. 27, 2015) (Wallach, J.). Click Here for a copy of the opinion.
After a protracted procedural history, the Federal Circuit took up Biosig Instruments v. Nautilus, Inc. on remand from the Supreme Court. The appellate dispute began when a district court granted summary judgment finding that claims in U.S. Pat. No. 5,337,753 – directed toward a heart rate monitor – were indefinite. The court found that a "spaced relationship" for placing the electrodes of the device was indefinite. The Federal Circuit reversed, holding that a claim term is indefinite only when it is "insoluably ambiguous." The Supreme Court then granted certiorari to determine whether the "insoluably ambiguous" standard was the appropriate measure of indefiniteness.
In Nautilus, 134 S.Ct. at 2130 (2014), the Supreme Court rejected the "insoluably ambiguous" standard, finding that it lacked precision and noting instead that claims are indefinite when "read in light of the specification delineating the patent, and the prosecution history, [they] fail to inform, with reasonable certainty those skilled in the art about the scope of the invention." On remand, the Federal Circuit directly addressed what many believed to be a heightened standard for indefiniteness, noting that the Supreme Court did not heighten the requirements for demonstrating indefiniteness, but instead sought to clarify the test by implementing the more familiar standard of "reasonable certainty."
Applying the Supreme Court's revised test, the Federal Circuit again concluded that the disputed claims were not indefinite. The Court chose only to "revisit the intrinsic evidence here to make clear that a skilled artisan would understand with reasonable certainty the scope of the invention." The Federal Circuit held that the intrinsic evidence would sufficiently inform a person of ordinary skill that the "spaced relationship" of the electrodes must be no more than the width of a hand and large enough that electrodes would not overlap. In light of the clarity within the prosecution history and patent itself, the Federal Circuit reached the same conclusion under the clarified standard – that the claims were not indefinite.
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