By Nelson T. Rivera
Nautilus Inc. (“Nautilus”) has petitioned the U.S. Supreme Court a second time to review a Federal Circuit ruling that a patent assigned to Biosig Instruments, Inc. (“Biosig”) is not indefinite. As reported by Matthew Siegal and Irah H. Donner in Law Journal Newsletters, the patent at issue “relates to grip activated heart rate monitors associated with exercise equipment, which are now ubiquitous on treadmills, step climbers and excercycles. The invention purportedly eliminates noise signals that interfere with the process of detecting a user’s heart rate.”
This infringement lawsuit was initially filed by Biosig against Nautilus in New York federal court in 2004. The district court held U.S. Patent No. 5,337,753 (“the ‘753 patent”) as being indefinite under 35 U.S.C §112 as a matter of law. For indefinite claims, the statutory guidelines come from 35 U.S.C. § 112, ¶2 which requires the specification of a patent to “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter” which the applicant “regards as the invention.” When a claim is considered indefinite in an issued patent it is both unpatentable and invalid.
“On appeal, the Federal Circuit reversed [the district court’s decision],” Siegel and Donner write, “ruling that it was perfectly acceptable to include terms having functional implications in product claims, without the need to employ “means-plus-function” terminology.” Then, as Vin Gurrieri, writing for Law360.com, puts it: “The Supreme Court overturned the Federal Circuit’s first indefinite decision in June 2014, ruling that the circuit court used the wrong standard to evaluate the patent. The high court said a patent is indefinite if it fails to inform a person skilled in the art about the scope of the invention ‘with reasonable certainty.’ But on remand, the Federal Circuit panel in April ruled the revised test did not change the outcome of the case, and the court in August denied Nautilus’ request for an en banc review.”
Nautilus is well aware that granting certiorari twice in the same action is very rare. Nevertheless, Nautilus is moving forward with its petition since it believes the panel “literally copied and pasted” much of its prior analysis that the high court rejected – conduct that Nautilus believes is no rarer than its decision to petition a second time.
LaRiviere Grubman frequently counsels clients with respect to the patentability of their technical innovations. If you have questions about protecting your technology, contact us at (831)-649-8800 or firstname.lastname@example.org.