|Posted on June 4, 2014 at 3:35 PM|
If you wear a heart monitor when exercising, here is a case for you! You can think of it as you run or bike on the trail sweeting bullets and running away from the mosquitos.
All kidding aside, Nautilus v Biosig was a case that practitioners--mainly patent counsel--and their invetors eagerly anticipated and ... they will be very disappointed with the end result. The question before the Court was essentially how clear must patent claims be?
Now, I am not a patent attorney, I am an attorney, business broker and valuation/appraisal geek so this is a good case to think about as I consider the value (if any) of a patent, value of the company (if any), and saleability of a business owning IP. That said, patent prosecutors earn their "bread and butter" writing the claims to uphold the application (yes, they do more than that ... but writing claims is a substantial part of the business and not doing it properly can be a problem, a big problem). The Patent Act requires that a patent specification "conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention." 35 U.S.C. sec. 112.
The Federal Circuit (which hears patent cases) has recognized patents --that is the patent threshhold is meet--so long as the claim, as construed, is "amenable to construction," and the claim, as construed, is not "insolubly ambiguous." Merriam-Webster defines "insoluble" as "cannot be dissolved in a liquid" and "not able to be solved or explained". What is "insolubly ambiguous" is a mystery to me and a huge pay-day for patent attorneys and their law firms. So, what did the U.S. Supreme Court have to say about this standard? Here are the bullets:
The Federal Circuit's "formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute's definiteness requirement."
They proposed a new standard, which goes like this:
"[W]e hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention."
It appears that the initial inquiry for definiteness involves evaluating the claim(s) "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, "definitiness is measured from the viewpoint of a person skilled in the art at the time the patent was filed.
Here, Nautils argued that the patent --of the opposing party--was invalid and that "definteness" fails 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."
Nautilus' counsel was asked whether the challenged claims where "amenable to construction" or "insolubly ambiguous"; the answer was, of course, favorable to their client and position.
The Court therefore created this new four-prong standard and observed that it agreed with Nautilus and its amici "that such terminology can leave courts and the patent bar at sea without a reliable compass." More on point, the Court observed that "Nautilus maintains that the claim term "spaced relationship" is open to multiple interpretations reflecting markedly different understandings of the patent's scope, as exemplified by the disagreement among members of the Federal Circuit panel. Biosig responds that 'space relationship,' read in light of the specification and as illustrated in the accompanying drawings, delineates the permissible spacing with sufficient precision."
This case has been remanded so that the Court of Appeals "can reconsider, under the proper standard, whether the relevant claims in '753 patent are sufficiently definite."
As some lawyers (and some others may say), "the Court punted". The compass they provided is not--in my opinion--any better than the "insoluble ambiguity". Furthermore, the case exemplifies the importance of drafting claims and the vague standards and problems that arise in these high dollar cases where the defendant raises the ambiguity argument to defeat the infringement and damages claims brought by a plaintiff.