Mark Harris, partner and co-head of the Appellate Practice Group at Proskauer
Mark Harris, partner and co-head of the Appellate Practice Group at Proskauer

In patent law, just a few words can cause a tremendous ripple effect. Whether those words are in the patent itself or in the language used by the courts to interpret them, judges and attorneys can argue endlessly about the meaning of certain words. In the case of Nautilus, Inc. v. Biosig Instruments, the phrases in contention include “spaced relationship” and “insolubly ambiguous.” 

The Nautilus case came in front of the Supreme Court on April 28, 2014, a decade after the dispute between the two companies began. The patent at the heart of the matter has everything to do with hearts or, rather, heart rates. Biosig holds a patent that many people use every time they go to the gym. Some equipment, such as certain treadmills, measure a runner’s heart rate, use technology that separates certain electrical waves the machine reads via the runner’s hands. This technology was patented by Biosig in 1994, and many exercise equipment manufacturers license the patents from Biosig. Nautilus does not. The company contends that is not valid because it is “indefinite.” The determination of whether a patent is definite, and therefore valid, is whether a person of ordinary skill in the art can determine the boundaries of the claim. That one small world set off a firestorm of legal activity that culminated in the Supreme Court hearing arguments to settle the dispute, and perhaps make a ruling that would have a large impact on the patent space in the future. 

Prior to the matter arriving at the Supreme Court, the latest decision in the case came from the Federal Circuit, which overturned a district court ruling that the patent was invalid. The Federal Circuit decided that the patent could not be invalidated as indefinite because it did not meet the doctrine of being “insolubly ambiguous.” This loaded phrase was one of the bones of contention in the arguments before the Court. 

The final phrase that contributed to this hubbub was the wording of the patent itself. The technology requires the user’s hands to be separated by a certain distance, and in the wording of the patent, this was indicated by calling for a “spaced relationship” between the electrodes that sense the electrical waves. This terminology was seen by Nautilus as contributing to the indefiniteness of the patent because it does not spell out how big that space should be.

Mark Harris, partner and co-head of the Appellate Practice Group at Proskauer, argued the case in front of the Supreme Court on behalf of Biosig. Harris is no stranger to the Court, having worked as a clerk for Justice John Paul Stevens and Justice Lewis Powell, Jr., and having worked on oral arguments in cases before. The Nautilus case, though, marks the first time Harris himself argued in front of the Court.

Harris, arguing for the respondent in the case, contends that Biosig’s patent “is not indefinite at all. The best proof of that was evidence on the record that a skilled artisan had been able to build the invention and had no confusion as to the nature of the invention.”

On the topic of the Federal Circuit’s use of the term “insolubly ambiguous,” Harris says, “We argued that the term was shorthand for a longer test… the Court seemed to be troubled by the phrase, if ‘insolubly ambiguous’ is the best way to describe what the Federal Circuit is doing or if they need to come up with a better way to describe it.” 

In the same way that the recent Alice Corporation Pty. Ltd. v. CLS Bank International Supreme Court case, which concerned the patentability of software, this case was as much about the future of patents as it was about the ins and outs of heart rate sensors.

“The Justices asked about the particular patent and asked questions about the test, struggling with both,” Harris explains. “How does one affect the other? If the Court were to reject the test, would they send it back to the Federal Circuit or apply the new test they’d announce to give guidance to the courts below?” 

Harris notes that the questions posed by the Justices showed that the Court was trying hard to wrestle with a difficult issue and understand the definiteness that patents require. “It’s nice when you get questions from the Court, active questioning. They are engaged and care about the result,” says Harris, who noted that, in his first time arguing in front of the Supreme Court, the room felt smaller than it did when he was clerking. 

While Harris won’t speculate as to the outcome of the case, he says that, depending on the Court’s decision, it could define a different test from what the Federal Circuit has been doing, which could change patent practice a great deal.


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