Legal Reasoning (JUSTICE GINSBURG for the Court)

Background

Claim at Issue Claim 1 of the ’753 patent, which contains the limitations critical to this dispute, refers to a “heart rate monitor for use by a user in association with exercise apparatus and/or exercise procedures.” [...] The claim “com­ prise[s],” among other elements, an “elongate member” (cylindrical bar) with a display device; “electronic circuitry including a difference amplifier”; and, on each half of the cylindrical bar, a live electrode and a common electrode “mounted ... in spaced relationship with each other.” [...] The claim sets forth additional elements, including that the cylindrical bar is to be held in such a way that each of the user’s hands “contact[s]” both electrodes on each side of the bar. [...] Further, the EMG signals detected by the two electrode pairs are to be “of substan­tially equal magnitude and phase” so that the difference amplifier will “produce a substantially zero [EMG] signal” upon subtracting the signals from one another.

Nautilus, Inc. at *4-5 (internal citations omitted).

Markman Hearing In 2011, the District Court conducted a hearing to determine the proper construction of the patent’s claims, see Markman v. Westview Instruments, Inc., 517 U. S. 370 (1996) (claim construction is a matter of law reserved for court decision), including the claim term “in spaced relationship with each other.” According to Biosig, that “spaced relationship” referred to the distance between the live electrode and the common electrode in each electrode pair. Nautilus, seizing on Biosig’s submissions to the PTO during the reexamination, maintained that the “spaced relationship” must be a distance “greater than the width of each electrode.” […] The District Court ultimately construed the term 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,” without any reference to the electrodes’ width. […]

Id. at *6.

Analysis

Points of Agreement Although the parties here disagree on the dispositive question—does the ’753 patent withstand definiteness scrutiny—they are in accord on several aspects of the §112, ¶2 inquiry. First, definiteness is to be evaluated from the perspective of someone skilled in the relevant art. […] Second, in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history. […] Third, “[d]efiniteness is measured from the viewpoint of a person skilled in [the] art at the time the patent was filed.” […]

Nautilus, Inc. at *8-9 (internal citations omitted).

Point of Disagreement: How Much Imprecision Does §112, ¶2 Tolerate The parties differ, however, in their articulations of just how much imprecision §112, ¶2 tolerates. In Nautilus’ view, a patent is invalid when a claim is “ambiguous, such that readers could reasonably interpret the claim’s scope differently.” […] Biosig and the Solici­tor General would require only that the patent provide reasonable notice of the scope of the claimed invention.

Id. at *9 (internal citations omitted).

SCOTUS Standard To determine the proper office of the definiteness com­mand, therefore, we must reconcile concerns that tug in opposite directions. Cognizant of the competing concerns, we read §112, ¶2 to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty. The definiteness requirement, so understood, mandates clarity, while recognizing that absolute precision is unattainable. The standard we adopt accords with opinions of this Court stating that “the cer­tainty which the law requires in patents is not greater than is reasonable, having regard to their subject-matter.” […]

Id. at *11 (internal citations omitted).

“Insolubly Ambiguous” May Breed Confusion In resolving Nautilus’ definiteness challenge, the Federal Circuit asked whether the ’753 patent’s claims were “amenable to construction” or “insolubly ambiguous.” Those formulations can breed lower court confusion, […] for they lack the precision §112, ¶2 demands. It cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the pa­ tent application, not that of a court viewing matters post hoc. To tolerate imprecision just short of that render­ ing a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging “zone of uncertainty,” United Carbon, 317 U. S., at 236, against which this Court has warned.

Id. at *11-12.

SCOTUS Refrains from Applying its standard “[M]indful that we are a court of review, not of first view,” Cutter v. Wilkinson, 544 U. S. 709, 718, n. 7 (2005), we decline to apply the standard we have announced to the controversy between Nautilus and Biosig. As we have explained, the Federal Circuit invoked a standard more amorphous than the statutory definiteness requirement allows. We therefore follow our ordinary practice of re­manding so that the Court of Appeals can reconsider, under the proper standard, whether the relevant claims in the ’753 patent are sufficiently definite. [...].

Id. at *14 (some internal citations omitted).

Conclusion