Friday, April 26, 2013

Indefiniteness finding rejected by CAFC in Biosig v. Nautilus

From within Biosig v. Nautilus :

The sole issue presented to this court is whether the
district court erred in holding that the asserted claims of
the ’753 patent is invalid for indefiniteness as a matter of
law. In particular, the district court held that “spaced
relationship” as recited in claim 1 and referring to the
spacing between the common and live electrodes was not
distinctly and particularly claimed in the patent in viola-
tion of 35 U.S.C. § 112, ¶ 2.

Indefiniteness is a legal issue this court reviews with-
out deference. Star Scientific, Inc. v. R.J. Reynolds Tobac-
co Co., 655 F.3d 1364, 1373 (Fed. Cir. 2011) (“Star
Scientific II”). Section 112, ¶ 2, requires that the
specification of a patent “conclude with one or more claims
particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his inven-
tion.” “Because claims delineate the patentee’s right to
exclude, the patent statute requires that the scope of the
claims be sufficiently definite to inform the public of the
bounds of the protected invention,
, what subject matter is covered by the exclusive rights of the patent.”
Halliburton Energy Servs., Inc. v. M-I LLC
, 514 F.3d 1244, 1249 (Fed. Cir. 2008).
A claim is indefinite only when it is “not amenable to
construction” or “insolubly ambiguous.”
Datamize, LLC v. Plumtree Software, Inc., 417 F.3d 1342, 1347 (Fed. Cir.
2005) (internal quotations and citations omitted). “In and
of itself, a reduction of the meaning of a claim term into
words is not dispositive of whether the term is definite . . .

And if reasonable efforts at claim construction result in
a definition that does not provide sufficient particularity
and clarity to inform skilled artisans of the bounds of the
claim, the claim is insolubly ambiguous and invalid for
Star Scientific, Inc. v. R.J. Reynolds
Tobacco Co., 537 F.3d 1357, 1371 (Fed. Cir. 2008) (“
Star Scientific I
”) (citations omitted). “Thus, a construed claim
can be indefinite if the construction remains insolubly
ambiguous . . . .”
Star Scientific II,
655 F.3d at 1373;
also Exxon Research & Eng’g Co.
v. United States
, 265
F.3d 1371, 1377–79 (Fed. Cir. 2001) (accepting the district
court’s claim construction and separately undertaking an
analysis of the claims at issue to determine indefinite-
Union Pac. Res. Co. v. Chesapeake Energy Corp.
236 F.3d 684, 689–90, 692 (Fed. Cir. 2001) (same);
Min. and Mfg. Co. v. Johns
on & Johnson Orthopaedics,
, 976 F.2d 1559, 1567 (Fed
. Cir. 1992) (same).

The CAFC noted:

The disputed term “spaced relationship” does not suf-
fer from indefiniteness. Because the term was amenable
to construction, indefiniteness here would require a
showing that a person of ordinary skill would find “spaced
relationship” to be insolubly ambiguous—that it fails to
provide sufficient clarity delineating the bounds of the
claim to one skilled in the art. In this case, a skilled
artisan would find such boundaries provided in the in-
trinsic evidence.


Contrary to the district court’s decision and to Nauti-
lus’s contention on appeal, this court’s jurisprudence does
not proscribe drafting or defining claims in relation to
their functions.
Moore U.S.A., Inc. v.
Standard Register
, 229 F.3d 1091, 1111 (Fed. Cir. 2000) (“We note that
there is nothing wrong with defining the dimensions of a
device in terms of the environment in which it is to be
see also
Vizio, Inc. v. Int’l Trade Comm’n
, 605
F.3d 1330, 1340 (Fed. Cir. 2010) (“[T]he ‘for decoding’
language . . . is properly construed as a limitation, and
not merely statement of purpose or intended use for the
invention, because ‘decoding’ is the essence or a funda-
mental characteristic of the claimed invention.”).

Bottom line

The only issue on this appeal is the summary judg-
ment of indefiniteness. Other aspects of the defense of
patent invalidity, although raised in the district court, are
not before us, and may be considered on remand. We
reverse the district court’s invalidity determination and
remand for further proceedings.


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