28 April 2015Americas

Federal Circuit maintains its validity finding in Biosig v Nautilus

The US Court of Appeals for the Federal Circuit has again found a patent covering a heart rate monitor to be valid, reversing and remanding a district court’s decision for further consideration in the long-running Biosig v Nautilus case.

The court yesterday (April 27) overturned a decision by the US District Court for the Southern District of New York that found fitness product maker Biosig’s patent, US number 5,337,753, to be invalid for indefiniteness.

The ‘753 patent covers an exercise machine heart rate monitor that eliminates noise signals when detecting a user’s heart rate.

To measure heart rate, the device uses electrodes that are in “spaced relationship” with each other.

In 2010, Biosig sued exercise machine company Nautilus for infringing the patent.

After a 2011 Markman hearing to determine the meaning of the claims in the patent, Nautilus filed for a summary judgment that the patent contains indefinite claims and should be declared invalid.

The term “spaced relationship” formed the basis of Nautilus’s indefiniteness argument. The district court agreed with Nautilus that the term was indefinite and granted the motion for summary judgment, but did not rule on infringement.

On appeal, the federal circuit reversed and remanded that decision back to the district court, finding that a claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous’”.

Nautilus appealed against the appeals court’s decision to the US Supreme Court, which rejected the federal circuit’s standard. In its decision handed down last year, the Supreme Court said that a patent is invalid for indefiniteness if its claims “fail to inform with reasonable certainty those skilled in the art about the scope of the invention.” It vacated and remanded the federal circuit’s decision.

In its April 27 decision the federal circuit concluded that the “spaced relationship” phrase “inform[s] those skilled in the art about the scope of the invention with reasonable certainty”.

The case will now return to the district court for further consideration.

Mark Harris, a partner from Proskauer Rose in New York, represented Biosig in the case.

He told LSIPR: “We are very pleased with the federal circuit’s ruling yesterday.

“The circuit agreed with us that the Supreme Court did not dramatically change course when it clarified that the test for definiteness is ‘reasonable certainty.’ And it confirmed that Biosig’s patent is definite, as we have argued all along.”

Philip Warrick, an associate at Portland-based Klarquist Sparkman LLP, the firm that represented Nautilus, said that Nautilus disagreed with the court’s ruling but is confident that it will ultimately secure a favourable outcome.

“The panel repeated most of its same analysis as before, copying large parts of its earlier opinion. In doing so, it repeated some of same analytical mistakes the Supreme Court had rejected in its decision,” Warrick added.

“The Supreme Court rejected the approach of determining patent-claim indefiniteness by a court construing the claim ‘viewing matters post hoc’,” he said.

“Instead of such a hindsight approach, a court needs to consider whether, when the patent issued, a person of skill in the art knew with reasonable certainty what the patent covers. Without such certainty from day one, the patent creates an innovation-destroying zone of uncertainty.”

Warrick continued: “While the panel’s opinion is disappointing, it correctly noted that the decision addresses only one defense in this case.”

Biosig did not respond to LSIPR’s requests for comment.

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