Nautilus V. Biosig: The Reasonably Certain Standard?
Nautilus v. Biosig: The Reasonably Certain Standard
Introduction
In Nautilus v. Biosig Instruments, the U.S. Supreme Court rejected the Federal Court’s “insolubly ambiguous” standard for finding indefiniteness under 35 U.S.C.A 112. Under that standard, a claim is indefinite if it is “insolubly ambiguous” and “not amendable to construction”. The Court in its place articulated a new standard under which a “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the patent prosecution, fail to inform, with reasonable certainty those skilled in the art about the scope of the invention”.
The court acknowledged that patent claims will contain “some modicum of uncertainty” however, patent …show more content…
who subsequently utilized the device without procuring a license. Biosig also alleged that Nautilus acquired StairMaster, and continued to sell the equipment using Biosig’s patented device without acquiring a license. After Biosig filed a suit for infringement, Nautilus requested that the United States Patent Office reexamine the ‘753 ex parte. The parties voluntarily dismissed the infringement suit and counterclaims without prejudice. Biosig argued that the ordinary person skilled in the art at the time the patent was filed would have known how to use a standard oscilloscope to determine the dimensions of the device including the specific distance of the “spaced relationship” that would eliminate the EMG signals as required by the claimed invention. The examiner found that this functionality enabled the claim to successfully overcome the cited prior art. Thus the PTO confirmed the patentability of the asserted claims upon reexamination. Biosig reinstated its infringement case and the District Court held a hearing regarding the proper construction of the claim’s phrase “in spaced relationship with each …show more content…
Nautilus moved for summary judgment arguing that the phrase “spaced relationship” was “indefinite” under section 112. The District Court granted Nautilus’ motion for summary judgment. The court held that a person of ordinary skill in the art at the time of the invention would not know how to design the system with the electrodes spaced at the correct distance necessary to eliminate EMG signals because it failed to state what “what precisely the space should
Introduction
In Nautilus v. Biosig Instruments, the U.S. Supreme Court rejected the Federal Court’s “insolubly ambiguous” standard for finding indefiniteness under 35 U.S.C.A 112. Under that standard, a claim is indefinite if it is “insolubly ambiguous” and “not amendable to construction”. The Court in its place articulated a new standard under which a “patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the patent prosecution, fail to inform, with reasonable certainty those skilled in the art about the scope of the invention”.
The court acknowledged that patent claims will contain “some modicum of uncertainty” however, patent …show more content…
who subsequently utilized the device without procuring a license. Biosig also alleged that Nautilus acquired StairMaster, and continued to sell the equipment using Biosig’s patented device without acquiring a license. After Biosig filed a suit for infringement, Nautilus requested that the United States Patent Office reexamine the ‘753 ex parte. The parties voluntarily dismissed the infringement suit and counterclaims without prejudice. Biosig argued that the ordinary person skilled in the art at the time the patent was filed would have known how to use a standard oscilloscope to determine the dimensions of the device including the specific distance of the “spaced relationship” that would eliminate the EMG signals as required by the claimed invention. The examiner found that this functionality enabled the claim to successfully overcome the cited prior art. Thus the PTO confirmed the patentability of the asserted claims upon reexamination. Biosig reinstated its infringement case and the District Court held a hearing regarding the proper construction of the claim’s phrase “in spaced relationship with each …show more content…
Nautilus moved for summary judgment arguing that the phrase “spaced relationship” was “indefinite” under section 112. The District Court granted Nautilus’ motion for summary judgment. The court held that a person of ordinary skill in the art at the time of the invention would not know how to design the system with the electrodes spaced at the correct distance necessary to eliminate EMG signals because it failed to state what “what precisely the space should