Last year, in Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (2014), the Supreme Court established a “reasonable certainty” standard for analyzing the definiteness of patent claims. In the twelve months since Nautilus was decided, the Federal Circuit has applied this standard in a number of cases—including recently on remand from the Supreme Court in Nautilus itself. See Biosig Instruments, Inc. v. Nautilus, Inc., No. 2012-1289, 2015 WL 1883265 (Fed. Cir. April 27, 2015). These decisions provide useful guidance for patent litigants regarding the application of the new standard and how the analysis under Nautilus compares to the Federal Circuit’s earlier decisions.
The Supreme Court’s Decision in Nautilus: The Reasonable Certainty Standard
The Patent Act requires that a patent must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” 35 U.S.C. § 112, ¶ 2. A patent that does not satisfy this requirement is invalid for indefiniteness.
Nautilus involved a patent directed to a heart rate monitor used in exercise equipment. Nautilus, 134 S. Ct. at 2124. The asserted patent claims describe a hollow cylindrical bar that a user grips with both hands, such that each hand comes into contact with two electrodes, one “live” and one “common.” Id. at 2126. The claims require that the live electrode and common electrode are “mounted … in spaced relationship with each other.” Id. The district court granted summary judgment of indefiniteness, explaining that the term “spaced relationship” did not explain “what precisely the space should be,” or even supply “any parameters” for determining the appropriate spacing. Id. at 2127.
On appeal, the Federal Circuit reversed. Citing the standard articulated in its earlier cases, the Court stated that a claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous.’” Nautilus, Inc. v. Biosig Instruments, Inc., 715 F.3d 891, 898 (Fed. Cir. 2013). Applying that standard, the Court found that the patent survived indefiniteness review. Id. The Court explained that the intrinsic evidence makes plain that the distance separating the live and common electrodes on each half of the bar “cannot be greater than the width of a user’s hands” because the claims require “the live and common electrodes to independently detect electrical signals at two distinct points of a hand.” Id. At the same time, the intrinsic evidence teaches that this distance cannot be “infinitesimally small, effectively merging the live and common electrodes into a single electrode with one detection point.” Id. Also, the functional elements of the claimed apparatus shed additional light on the meaning of “spaced relationship” in that a skilled artisan would know that the recited functions of equalizing and removing unwanted signals could be attained by adjusting design variables, including the spacing of the electrodes. Id. at 899-900.
In a unanimous decision by Justice Ginsberg, the Supreme Court concluded that the Federal Circuit’s “insolubly ambiguous” test did not correctly frame the statute’s definiteness requirement. 134 S. Ct. at 2124. The Court explained that Section 112 “entails a ‘delicate balance.’” Id. at 2128. “On the one hand, the definiteness requirement must take into account the inherent limitations of language.” Id. “Some modicum of uncertainty . . . is the ‘price of ensuring the appropriate incentives for innovation.’” Id. Thus, absolute certainty is not realistic or required to satisfy the definiteness requirement. At the same time, a patent must be “precise enough to afford clear notice of what is claimed, thereby ‘appris[ing] the public of what is still open to them.’” Id. at 2129. “Otherwise there would be ‘[a] zone of uncertainty which enterprise and experimentation may enter only at the risk of infringement claims.’” Id. Balancing these competing concerns, the Court concluded that § 112, ¶ 2 requires that “a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” Id.
Application of the Standard: Federal Circuit Decisions Post-Nautilus
On remand, the Federal Circuit reached the same conclusion as before and reversed the district court’s summary judgment. Biosig, No. 2012-1289, 2015 WL 1883265, at *1. The Court held that even under a “reasonable certainty” standard, the asserted claims are not indefinite. Id.
The Court reviewed the intrinsic evidence and concluded that a skilled artisan would understand with reasonable certainty the scope of the invention. Id. at *6. The Court reiterated that the physical requirements of the claimed monitor require the “spaced relationship” to be “neither infinitesimally small nor greater than the width of a user’s hands.” Id. Additionally, the function of substantially removing unwanted signals is “highly relevant” to ascertaining the boundaries of the “spaced relationship” between the live and common electrodes. Id. at *7. Thus, the Court concluded that “[t]he term ‘spaced relationship’ does not run afoul of ‘the innovation-discouraging “zone of uncertainty” against which [the Supreme Court] has warned,’ and to the contrary, informs a skilled artisan with reasonable certainty of the scope of the claim.” Id. at *8.
On remand, the Federal Circuit did not squarely address the question of whether the reasonable certainty standard raises the bar for definiteness. Id. at *4. Instead, the Court stated only that the Supreme Court has “modified the standard by which lower courts examine allegedly ambiguous claims,” and concluded that “we may now steer by the bright star of ‘reasonable certainty,’ rather than the unreliable compass of ‘insoluble ambiguity.’” Id. The Court also noted that “[i]n the wake of [Nautilus], judges have had no problem operating under the reasonable certainty standard.” Id. at *4-*5.
For example, in DDR Holdings, LLC v. Hotels.com, 773 F.3d 1245 (Fed. Cir. 2014), the Federal Circuit considered the term “look and feel” in the context of claims directed to the visual elements of a web page. 773 F.3d at 1260- 61. Analogizing to the facts in both pre- and post-Nautilus cases, the Court concluded that “look and feel” is not a facially subjective term, but instead, “has an established meaning in the art.” Id. Thus, the asserted claims inform those of ordinary skill in the art with reasonable certainty as to the scope of the invention and satisfy the definiteness requirement. Id. at 1261.
Similarly, in Interval Licensing LLC v. AOL, Inc., 766 F.3d 1364 (Fed. Cir. 2014), the Federal Circuit applied the reasonable certainty standard to claims for a system that displays images on a device “in an unobtrusive manner that does not distract a user.” 766 F.3d 1367-1368. With respect to the term “unobtrusive manner,” the Court explained: “[w]e do not understand the Supreme Court to have implied in [Nautilus], and we do not hold today, that terms of degree are inherently indefinite.” Id. at 1370. “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Id. Nevertheless, the Court found that the term “unobtrusive manner” is “highly subjective” and “on its face, provides little guidance to one of skill in the art.” Id. at 1371. A term of degree, like “unobtrusive manner,” “fails to provide sufficient notice of its scope if it depends on the unpredictable vagaries of any one person’s opinion.” Id.