May 2013
If the Meaning of a Claim Is Discernible, the Claim Is Not Indefinite
| Judges: Newman, Schall (concurring), Wallach (author) |
| [Appealed from S.D.N.Y., Judge Hellerstein] |
In Biosig Instruments, Inc. v. Nautilus, Inc., No. 12-1289 (Fed. Cir. Apr. 26, 2013), the Federal Circuit reversed and remanded the district court’s judgment that U.S. Patent No. 5,337,753 (“the ’753 patent”), assigned to Biosig Instruments, Inc. (“Biosig”), is invalid for indefiniteness.
The ’753 patent is directed to a heart rate monitor in exercise equipment that eliminates noise signals caused by muscle movement. In addition to the capability of substantially removing noise signals, claim 1 recites a monitor, a means for measuring time intervals between heart pulses, and a means for calculating the heart rate of a user using the measured time intervals. Claim 1 includes the disputed term “spaced relationship” to describe the relationship between a live electrode and a common electrode on a cylindrical bar.
After the PTO confirmed the patentability of the ’753 patent in reexamination proceedings, Biosig sued Nautilus, Inc. (“Nautilus”) for infringement of independent claim 1 and dependent claim 11. The district court construed “spaced relationship” to mean “there is a defined relationship between the live electrode and the common electrode on one side of the cylindrical bar and the same or a different defined relationship between the live electrode and the common electrode on the other side of the cylindrical bar.” Slip op. at 12 (citation omitted). Nautilus then moved for SJ of infringement and invalidity for indefiniteness. The district court denied the motion with respect to infringement, but held that “spaced relationship” as recited in claim 1 and referring to the spacing between the common and live electrodes was not distinctly and particularly claimed in the ’753 patent in violation of 35 U.S.C. § 112, ¶ 2. Biosig appealed.
On appeal, the Federal Circuit concluded that “spaced relationship” is not indefinite because it is amenable to construction. The Court explained that indefiniteness requires a showing that a person of ordinary skill would find “spaced relationship” to be insolubly ambiguous because it fails to provide sufficient clarity delineating the bounds of the claim. In the Court’s view, a skilled artisan would find such boundaries in the intrinsic evidence. Specifically, the Court cited the ’753 patent’s claim language, specification, and the figures illustrating the “spaced relationship” between the live and common electrodes as providing sufficient clarity as to the bounds of this term. For example, the Court found that the distance between the live electrode and the common electrode cannot be greater than the width of a user’s hands because claim 1 requires the live and common electrodes to independently detect electrical signals at two distinct points of a hand. The Court also found that the distance cannot be infinitesimally small, effectively merging the live and common electrodes into a single electrode with one detection point. Thus, the Court found that the ’753 patent discloses certain inherent parameters of the claimed apparatus that may be sufficient to allow one of ordinary skill in the art to understand the metes and bounds of “spaced relationship.”
“[W]e have not insisted that claims be plain on their face in order to avoid a determination of invalidity for indefiniteness. ‘If the meaning of the claim is discernible, even though the task may be formidable and the conclusion may be one over which reasonable persons will disagree, we have held the claim sufficiently clear to avoid invalidity on indefiniteness grounds.’ In addition, ‘[p]rovided that the claims are enabled, and no undue experimentation is required, the fact that some experimentation may be necessary to determine the scope of the claims does not render the claims indefinite.’” Slip op. at 18 (second alteration in original) (citations omitted).
The Federal Circuit further found that the functionality of the heart rate monitor as recited in claim 1, described in the specification, and which provided the basis for overcoming the PTO’s office action rejections during the reexamination, shed further light on the meaning of “spaced relationship.” In particular, the Court relied on a “whereby” clause added during reexamination, which the Court found describes the function of substantially removing noise signals where the noise signals are detected between live and common electrodes in “spaced relationship” with each other. The Court further found that the “whereby” clause was a reason for overcoming the cited prior art and confirming the patentability of the asserted claims during reexamination.
Next, turning to extrinsic evidence, the Court cited a declaration by an inventor submitted to the PTO during reexamination and the declaration of an expert, both describing tests performed to measure noise signals and determine the “spaced relationship.” The Court found that such tests were acceptable, stating that “we have not insisted that claims be plain on their face in order to avoid a determination of invalidity for indefiniteness.” Id. at 18. “[O]bjections relating to the mere fact that there may be some need for experimentation to determine the scope of the claims carry little weight.” Id.
Nautilus relied on the holding in Halliburton Energy Services, Inc. v. M-I LLC, 514 F.3d 1244, 1249 (Fed. Cir. 2008), in support of its indefiniteness argument. In Halliburton, the patent-at-issue was directed to a “fragile gel” that was used in drilling. In Halliburton, the Federal Circuit found no disclosure as to how the claimed “fragile gel” performed differently than the prior art. Halliburton’s failure to distinguish the fragileness of the drilling fluids of the invention from the close prior art, according to the Court, was fatal because it did not limit what was invented beyond the prior art. Here, the Federal Circuit distinguished Halliburton. The Court explained that, in the present case, the claimed apparatus has inherent parameters because the “spaced relationship” cannot be larger than the width of a user’s hand. Additionally, it had been shown that skilled artisans can readily ascertain the bounds of the “spaced relationship” through tests using standard equipment. Thus, the Court concluded that the “upper bound” that was lacking in Halliburton is found here and that Halliburton fails to support Nautilus’s position.
Rather, the Court found this case analogous to Star Scientific, Inc. v. R.J. Reynolds Tobacco Co., 655 F.3d 1364, 1373 (Fed. Cir. 2011) (“Star Scientific II”). There, the disputed term was “controlled environment” as applied to the practice of tobacco curing and whether a person of ordinary skill would know how to establish a controlled environment to perform the claimed method. In Star Scientific II, the Federal Circuit held that the fact that the patents-at-issue did not give exact numbers measuring humidity, temperature, and airflow in a conventional curing barn was not dispositive. On the contrary, the Court found evidence showing that a person of skill in the art of tobacco curing would possess adequate understanding to manipulate these variables to create a controlled environment. Numerical values were found not necessary for one skilled in the art to implement conventional curing, and “controlled environment” was held not insolubly ambiguous.
Nautilus further argued, and the district court held, that Biosig had not articulated with specificity the dimensions or other parameters characterizing the space between the electrodes. The Federal Circuit disagreed, explaining that nothing in the Court’s jurisprudence proscribes drafting or defining claims in relation to their functions. The Court found that the district court erred by viewing “spaced relationship” in a vacuum and by failing to consider the functional aspects of claim 1, e.g., how “spaced relationship” contributes to the removal of noise signals and the overall capabilities of the claimed heart rate monitor. In the Court’s view, without the context provided by the intrinsic record, it would be impossible to ascertain what the inventors actually invented and intended to cover with the claim.
Finally, Nautilus argued that claims 1 and 11 are invalid as they impermissibly claim both an apparatus and a method of use. Specifically, Nautilus contended that claim 1 recites a heart rate monitor and a required step that a user holds the monitor. According to Nautilus, it is unclear whether the alleged infringement occurs when one makes a heart rate monitor having the recited structural elements, or whether infringement allegedly occurs when the user actually holds the handle and contacts the electrodes. The Federal Circuit found this contention unpersuasive because, in its view, the ’753 patent recites apparatus claims with functional limitations that describe the capability of substantially removing noise signals.
In sum, because variables, including the spacing, size, shape, and material affecting the “spaced relationship” between the electrodes, can be determined by those skilled in the art, the Federal Circuit concluded that “spaced relationship” cannot be insolubly ambiguous. The Court reversed and remanded the district court’s indefiniteness holding.
In a concurring opinion, Judge Schall agreed with the Court’s reversal of the judgment on appeal and its remand for further proceedings. While he agreed with the Court that the district court erred in holding claims 1 and 11 of the ’753 patent invalid by reason of indefiniteness, Judge Schall would have based that ruling on a more limited analysis. Judge Schall simply concluded that neither test for indefiniteness was satisfied—when it is not amenable to construction, or when, even if it can be construed, the construction remains insolubly ambiguous, meaning it fails to provide sufficient clarity delineating the metes and bounds of the claim to one of skill in the art. Judge Schall found the claim term amenable to construction because the district court construed it. Moreover, he found that the district court’s construction requires a fixed spatial relationship between the live electrode and the common electrode. Judge Schall found this evidence, coupled with the disclosure in the intrinsic evidence relied on by the Court, may be sufficient for a skilled artisan to understand the metes and bounds of “spaced relationship.”
