Nautilus’s Supreme Court petition bolstered by tech companies’ support

A group of technology companies has urged the US Supreme Court to re-hear the Nautilus v Biosig case, arguing that the US Court of Appeals for the Federal Circuit failed to apply the “reasonable certainty” standard for determining whether a patent claim is indefinite.

Garmin, Limelight and SAP America, along with a number of other parties, filed an amicus brief in support of Nautilus.

“Denying the petition would permit the federal circuit to remain out of step with this court’s clear guidance. Patent claims are designed to provide public notice of an invention—what it covers and what it does not cover.

“The post-remand opinion undermines that vital function and stands to encourage far-ranging misapplication of the Supreme Court’s ‘reasonable certainty’ test. Without review, it may stifle innovation and leave industry participants to make critical decisions in the dark despite the light was—or should have been—shed by the Supreme Court’s [previous] decision in Nautilus v Biosig,” the technology companies argued.

The brief was filed on November 18.

Nautilus is seeking a reversal of the federal circuit’s decision from this year that it had infringed Biosig’s heart rate monitor patent.

In June 2014, the Supreme Court had ruled that the “insolubly ambiguous” test applied by the federal circuit when determining if a patent’s claim is indefinite “lacked” the precision that is required under US patent law.

It remanded the Nautilus v Biosig case and asked the federal circuit to assess whether the disputed patent claim provides “reasonable certainty” to an individual skilled in the art.

In April, the federal circuit, under the new “reasonable certainty” standard, ruled that the disputed patent is valid and was infringed by Nautilus.

Nautilus asked the Supreme Court to re-hear the case last month.

Nautilus argued that the federal circuit “copied and pasted much of its opinion the Supreme Court had vacated” and failed to apply the “proper standard”.

In its writ, Nautilus asked the Supreme Court to determine whether a patent claim is indefinite if its “scope is not reasonably certain the day the patent issues” and whether its scope can be “distinguished from prior art by a functional requirement”.

Nautilus’s argument has also been bolstered by the intervention of non-profit group Public Knowledge and the Electronic Frontier Foundation.

They argue that if the federal circuit’s April decision stands, the result will encourage “harmful practices” by “injecting ambiguity into patents” and leave “the public uncertain of what they may and may not do in the face of a patent”.