Supreme Court Wants Patents Out of the Federal Circuit’s Zone of Uncertainty

June means big US Supreme Court decisions. Yesterday morning they issued one that is unanimous, and in the patent world it’s big. The Roberts Court continued its tradition of rejecting rigid standards and nearly impossible hurdles erected by the one federal appeals court that reviews all patent cases, the Federal Circuit. The decision in Nautilus, Inc. v. Biosig Instruments, Inc. was delivered by Justice Ginsburg and aims at all the vague patents on the books. There are tons of them.

Biosig owns a patent for heart rate monitors in exercise equipment. It covers electrodes in “a hollow cylindrical bar that a user grips with both hands.” I was on a treadmill at the gym after the decision was announced, and to check my pulse I had to hold onto rails on each side of the moving belt. What they’re talking about.

Biosig sued Nautilus which acquired StairMaster after Biosig pitched a license of their patent to them. When StairMaster came out with machines with pulse monitor electrodes in the bars but no patent license from BioSig, they sued.

The first phase of patent cases is usually an effort to figure out what the patent claims as the invention. A problem built into all patents is they’re words, and what the words mean is left to the federal district judges to sort out.

Here the fight was over electrodes being “in spaced relationship with each other.” The patent doesn’t say an inch apart or 5 inches or 10 centimeters, just “spaced.”  Judge Alvin K. Hellerstein in New York said that’s indefinite. It doesn’t say what the space should be.

The Patent Act requires patents to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as the invention.” §112. It’s the definiteness fitness test the judge said BioSig failed. The requirement of definiteness in patents has been part of the law for 144 years.

Section 112 must be read from the perspective of someone skilled in the relevant art. If the patent is about fountain pen filling mechanisms, somebody skilled at making them is who must understand what the words mean. Not lawyers. The patent is supposed to teach that imaginary person how to make the new filling gadget.

The Federal Circuit reversed the common sense of the district court using their longstanding standard that the patent only had to be “amenable to construction” and not “insolubly ambiguous.” They could figure out the spacing from the rest of the patent and its history, so it wasn’t indefinite.

Since the electrodes must both be in contact with a hand, they said the space had to be close enough to be covered by a hand. Indiana’s power forward Noah Vonleh came to the NBA 2014 Draft Combine with hands measured 11.75″ wide.  Mine are about 8.75.

Many critics today say we are flooded with junk patents. A common characteristic of them is they’re ambiguous. If you must defend against one, you will spend a fortune trying to persuade a court the patent is no good because of that. This is rich territory for patent trolls who control vague patents and know the people getting their license demand letters can’t afford to do that.

The Nautilus decision looks like the work of a court that’s heard about junk patents and trolls. It cites a 1942 Supreme Court decision which says the law must prevent a “zone of uncertainty, in which enterprise and experimentation may enter only at the risk of infringement claims.” United Carbon Co. v. Binney & Smith Co.

If a patent teaches something definite if it isn’t “insolubly ambiguous,” the zone of uncertainty has spacing like the Grand Canyon. Patent litigation today shows it.

The Supreme Court reversed the Federal Circuit and adopted a common sense standard which Judge Hellerstein seems to have followed. “A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

Absolute precision is unobtainable because we’re forced to use words. The Supreme Court did not decide what “in spaced relationship with each other” means. They sent it back to Federal Circuit to interpret, with reasonable certainty.

About Craig Pinkus

Craig Pinkus is a partner in the Intellectual Property Group. He also is a member of the Litigation and the Sports, Entertainment and Media Groups. He assists clients with a broad range of disputes and transactions involving all areas of intellectual property, entertainment, and other complex business arrangements. He has conducted trials and arbitrations throughout the United States and has argued appeals before the Seventh, Sixth and Federal Circuit Courts of Appeal, the Indiana appellate courts, and United States Supreme Court.
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