The case Nautilus v. Biosig could greatly impact the software industry, and is best known for its potential to impact on the future of patent law clarity.

On April 28, the trial began as Proskauer argued a key patent law case before the U.S. Supreme Court that began, urging the Justices to affirm a decision by the Court of Appeals for the Federal Circuit. The patent is Biosig’s, and the company maintains intellectual property over technology used to measure heart rates using electrical waves through machines at typical gyms and other home-gym sets.

Proskauer’s client, Biosig, won at the Federal Circuit, which had sent the case back to the district court in a ruling supporting its patent claim for heart-rate-monitor technology. According to a brief by Proskauer, “The Federal Circuit held that a patent claim satisfies the definiteness requirement of 35 U.S.C. § 112, 2 so long as a person skilled in the art would be able to discern its meaning from the intrinsic evidence in the patent—the claim language, the specification and the prosecution history.”

Proskauer Appellate Group Co-Head Mark Harris argued on behalf of Biosig. He said, “The decision endorses our position substantively. In replacing the Federal Circuit’s test for indefiniteness, the Court adopted the test that we advocated: whether the patent’s claims, viewed in light of the specification and prosecution history, inform a skilled artisan about the scope of the invention with reasonable certainty.”

Harris added, “While the Court did not apply the test to the patent itself, it included a footnote noting pointedly that all three judges below found Nautilus’s arguments against this patent unavailing. That is a clear signal to the Federal Circuit on remand that our patent is not indefinite.”

Recently, Proskauer’s Appellate Group has secured wins on behalf of clients, including three Supreme Court wins in the last five years, as well as cases in other appellate courts concerning the extraterritorial application of New York State and New York City human-rights laws; the effect of the antitrust laws on sports leagues; class-wide relief for Social Security recipients; the right to child support involving same-sex partners; and ERISA, employment and patent cases.



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In Proskauer’s view, the Supreme Court did not substantively change the standard for patent clarity. Even in the Federal Circuit, the standard has always been whether the patent gives notice of the boundaries of an invention to a person skilled in the art.

“The Supreme Court’s only quibble with the Federal Circuit concerned certain glosses put on the proper standard by phrases like ‘insolubly ambiguous’ and ‘amenable to construction,’” he said. “The Supreme Court thought that such glosses were confusing to lower courts and potentially moved the focus away from the understanding of a person of skill and toward how a judge would interpret a patent term.”

Further, Nautilus argued that any ambiguity in any claim term should render the entire claim invalid. The Court dismissed that proposal out of hand.  Instead, the Court recognized that some degree of ambiguity is inevitable when complex technologies are reduced to language, and it confirmed the longstanding principle that “the certainty which the law requires in patents is not greater than is reasonable.”

So, what kind of impact will this court decision have on patent litigation?

“Because the Supreme Court’s holding was so circumscribed, this case is unlikely to have a dramatic effect on patent litigation,” Harris said. “Certainly, defendants for a time may be emboldened to raise more indefiniteness defenses in the hopes that lower-court judges will over-read the Court’s decision.  But we expect that the lower courts will understand that the Supreme Court was merely clarifying – not changing – the indefiniteness standard, and therefore the success rate for indefiniteness challenges is unlikely to change drastically in the wake of this decision.”

According to Harris, clarity will depend on the technology at issue and the understanding of a person skilled in the relevant art. “As long as the skilled artisan can figure out what invention is being claimed by analyzing the claims in light of the specification and prosecution history, the patent is definite.”