Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`134 S.Ct. 2120
`Supreme Court of the United States
`
`NAUTILUS, INC., Petitioner
`v.
`BIOSIG INSTRUMENTS, INC.
`
` | Argued April 28,
`No. 13–369.
`2014.
` | Decided June 2, 2014.
`
`Synopsis
`Background: Assignee of patent directed to a heart rate
`monitor used in exercise equipment brought infringement
`action against competitor. Following claim construction, the
`United States District Court for the Southern District of New
`York, Alvin K. Hellerstein, J., granted competitor's motion
`for summary judgment, holding that the patent was invalid
`as indefinite. Assignee appealed. The United States Court of
`Appeals for the Federal Circuit, Wallach, Circuit Judge, 715
`F.3d 891,reversed, and certiorari was granted.
`
`Holdings: The Supreme Court, Justice Ginsburg, held that:
`
`[1] patent is invalid for indefiniteness if its claims, read
`in light of the specification delineating the patent, and the
`prosecution history, fail to inform, with reasonable certainty,
`those skilled in the art about the scope of the invention,
`abrogating Hearing Components, Inc. v. Shure Inc., 600 F.3d
`1357, Datamize, LLC v. Plumtree Software, Inc., 417 F.3d
`1342, Exxon Research & Engineering Co. v. United States,
`265 F.3d 1371, Every Penny Counts, Inc. v. Wells Fargo
`Bank, N. A., 2014 WL 869092, and
`
`[2] remand was required to permit the Court of Appeals
`to reconsider, under the proper standard for definiteness,
`whether the claim term “spaced relationship” in patent
`delineated the permissible spacing of electrodes with
`sufficient precision.
`
`Vacated and remanded.
`
`West Headnotes (15)
`
`[1]
`
`Patents
`
`Ambiguity, Uncertainty, or Indefiniteness
`
`A patent is invalid for indefiniteness if its claims,
`read in light of the specification delineating
`the patent, and the prosecution history, fail to
`inform, with reasonable certainty, those skilled
`in the art about the scope of the invention;
`abrogating Hearing Components, Inc. v. Shure
`Inc., 600 F.3d 1357, Datamize, LLC v. Plumtree
`Software, Inc., 417 F.3d 1342, Exxon Research
`& Engineering Co. v. United States, 265 F.3d
`1371, Every Penny Counts, Inc. v. Wells Fargo
`Bank, N. A., 2014 WL 869092. 35 U.S.C.A. §
`112.
`
`160 Cases that cite this headnote
`
`[2]
`
`Patents
`Patents
`
`The patent monopoly is a property right, and like
`any property right, its boundaries should be clear.
`U.S.C.A. Const. Art. 1, § 8, cl. 8.
`
`Cases that cite this headnote
`
`[3]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`Definiteness of a patent is to be evaluated from
`the perspective of someone skilled in the relevant
`art. 35 U.S.C.A. § 112.
`
`4 Cases that cite this headnote
`
`[4]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`In assessing a patent's definiteness, claims are to
`be read in light of the patent's specification and
`prosecution history. 35 U.S.C.A. § 112.
`
`130 Cases that cite this headnote
`
`[5]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`Definiteness is measured from the viewpoint of
`a person skilled in the art at the time the patent
`was filed. 35 U.S.C.A. § 112.
`
`3 Cases that cite this headnote
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`1
`
`SAMSUNG 1045
`Samsung Electronics v. SmartFlash
`CBM2014-00199
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`[6]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`The patent statute's definiteness requirement
`must take into account the inherent limitations
`of language; some modicum of uncertainty is the
`price of ensuring the appropriate incentives for
`innovation. 35 U.S.C.A. § 112.
`
`4 Cases that cite this headnote
`
`[7]
`
`Patents
`State of the art
`
`Patents are not addressed to lawyers, or even to
`the public generally, but rather to those skilled in
`the relevant art. 35 U.S.C.A. § 112.
`
`4 Cases that cite this headnote
`
`[8]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`A patent must be precise enough to afford clear
`notice of what is claimed, thereby apprising the
`public of what is still open to them; otherwise
`there would be a zone of uncertainty which
`enterprise and experimentation may enter only at
`the risk of infringement claims. 35 U.S.C.A. §
`112.
`
`26 Cases that cite this headnote
`
`[9]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`The patent drafter is in the best position to
`resolve the ambiguity in patent claims. 35
`U.S.C.A. § 112.
`
`2 Cases that cite this headnote
`
`[10]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`The patent statute's definiteness provision
`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;
`the definiteness requirement, so understood,
`
`mandates clarity, while recognizing that absolute
`precision is unattainable. 35 U.S.C.A. § 112.
`
`175 Cases that cite this headnote
`
`[11]
`
`Patents
`Ambiguity, Uncertainty, or Indefiniteness
`
`The certainty which the law requires in patents is
`not greater than is reasonable, having regard to
`their subject-matter. 35 U.S.C.A. § 112.
`
`12 Cases that cite this headnote
`
`[12]
`
`Patents
`Scope of Review
`
`the Supreme Court does not
`Although
`micromanage the Federal Circuit's particular
`word choice in applying patent-law doctrines, it
`must ensure that the Federal Circuit's test is at
`least probative of the essential inquiry.
`
`1 Cases that cite this headnote
`
`[13]
`
`Federal Courts
`Particular cases
`
`Remand was required to permit the Court of
`Appeals to reconsider, under the proper standard
`for definiteness, whether the claim term “spaced
`relationship” in patent for a heart rate monitor
`used in exercise equipment delineated the
`permissible spacing of electrodes with sufficient
`precision to satisfy statutory requirements. 35
`U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`[14]
`
`Federal Courts
`Presentation of Questions Below or on
`Review; Record; Waiver
`
`The Supreme Court is a court of review, not of
`first view.
`
`2 Cases that cite this headnote
`
`[15]
`
`Patents
`In general; utility
`
`US Patent 5,337,753. Cited.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
`
`2
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`Cases that cite this headnote
`
`*2123 Held :
`
`*2122 Syllabus *
`
`The Patent Act requires that a patent specification “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. This
`case concerns the proper reading of the statute's clarity and
`precision demand.
`
`Assigned to respondent Biosig Instruments, Inc., the patent
`in dispute (the '753 patent) involves a heart-rate monitor used
`with exercise equipment. Prior heart-rate monitors, the patent
`asserts, were often inaccurate in measuring the electrical
`signals accompanying each heartbeat (electrocardiograph or
`ECG signals) because of the presence of other electrical
`signals (electromyogram or EMG signals), generated by the
`user's skeletal muscles, that can impede ECG signal detection.
`The invention claims to improve on prior art by detecting and
`processing ECG signals in a way that filters out the EMG
`interference.
`
`Claim 1 of the '753 patent, which contains the limitations
`critical to this dispute, refers to a “heart rate monitor for use by
`a user in association with exercise apparatus and/or exercise
`procedures.” The claim “comprise[s],” among other elements,
`a cylindrical bar fitted with a display device; “electronic
`circuitry including a difference amplifier”; and, on each half
`of the cylindrical bar, a “live” electrode and a “common”
`electrode “mounted ... in spaced relationship with each other.”
`
`Biosig filed this patent infringement suit, alleging that
`Nautilus, Inc., without obtaining a license, sold exercise
`machines containing Biosig's patented technology. The
`District Court, after conducting a hearing to determine the
`proper construction of the patent's claims, granted Nautilus'
`motion for summary judgment on the ground that the claim
`term “in spaced relationship with each other” failed § 112, ¶
`2's definiteness requirement. The Federal Circuit reversed and
`remanded, concluding that a patent claim passes the § 112, ¶ 2
`threshold so long as the claim is “amenable to construction,”
`and the claim, as construed, is not “insolubly ambiguous.”
`Under that standard, the court determined, the '753 patent
`survived indefiniteness review.
`
`1. A patent is invalid for indefiniteness if its claims, read
`in light of the patent's specification and prosecution history,
`fail to inform, with reasonable certainty, those skilled in the
`art about the scope of the invention. The parties agree that
`definiteness is to be evaluated from the perspective of a
`person skilled in the relevant art, that claims are to be read in
`light of the patent's specification and prosecution history, and
`that definiteness is to be measured as of the time of the patent
`application. The parties disagree as to how much imprecision
`§ 112, ¶ 2 tolerates.
`
`Section 112's definiteness requirement must take into account
`the inherent limitations of language. See Festo Corp. v.
`Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722,
`731, 122 S.Ct. 1831, 152 L.Ed.2d 944. On the one hand,
`some modicum of uncertainty is the “price of ensuring the
`appropriate incentives for innovation,” id., at 732, 122 S.Ct.
`1831; and patents are “not addressed to lawyers, or even to
`the public generally,” but to those skilled in the relevant art,
`Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403, 437,
`22 S.Ct. 698, 46 L.Ed. 968. 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,’
`” Markman v. Westview Instruments, Inc., 517 U.S. 370, 373,
`116 S.Ct. 1384, 134 L.Ed.2d 577, in a manner that avoids
`“[a] zone of uncertainty which enterprise and experimentation
`may enter only at the risk of infringement claims,” United
`Carbon Co. v. Binney & Smith Co., 317 U.S. 228, 236,
`63 S.Ct. 165, 87 L.Ed. 232. The standard adopted here
`mandates clarity, while recognizing that absolute precision
`is unattainable. It also accords with opinions of this Court
`stating that “the certainty which the law requires in patents is
`not greater than is reasonable, having regard to their subject-
`matter.” Minerals Separation, Ltd. v. Hyde, 242 U.S. 261,
`270, 37 S.Ct. 82, 61 L.Ed. 286. Pp. 2127 – 2129.
`
`2. The Federal Circuit's standard, which tolerates some
`ambiguous claims but not others, does not satisfy the
`statute's definiteness requirement. The Court of Appeals
`inquired whether the '753 patent's claims were “amenable
`to construction” or “insolubly ambiguous,” but such
`formulations lack the precision § 112, ¶ 2 demands.
`To
`tolerate
`imprecision
`just short of
`that rendering
`a claim “insolubly ambiguous” would diminish
`the
`definiteness requirement's public-notice function and foster
`the innovation-discouraging “zone of uncertainty,” United
`Carbon, 317 U.S., at 236, 63 S.Ct. 165, against which this
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`3
`
`3
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`Court has warned. While some of the Federal Circuit's fuller
`explications of the term “insolubly ambiguous” may come
`closer to tracking the statutory prescription, this Court must
`ensure that the Federal Circuit's test is at least “probative of
`the essential inquiry.” Warner–Jenkinson Co. v. Hilton Davis
`Chemical Co., 520 U.S. 17, 40, 117 S.Ct. 1040, 137 L.Ed.2d
`146. The expressions “insolubly ambiguous” and “amenable
`to construction,” which permeate the Federal Circuit's recent
`decisions concerning § 112, ¶ 2, fall short in this regard and
`can leave courts and the patent bar at sea without a reliable
`compass. Pp. 2129 – 2130.
`
`3. This Court, as “a court of review, not of first view,” Cutter
`v. Wilkinson, 544 U.S. 709, 718, n. 7, 125 S.Ct. 2113, 161
`L.Ed.2d 1020, follows its ordinary practice of remanding
`so that the Federal Circuit can reconsider, under the proper
`standard, whether the relevant claims in the '753 patent are
`sufficiently definite, see, e.g., Johnson v. California, 543 U.S.
`499, 515, 125 S.Ct. 1141, 160 L.Ed.2d 949. P. 2131.
`
`715 F.3d 891, vacated and remanded.
`
`*2124 GINSBURG, J., delivered the opinion for a
`unanimous Court.
`
`Attorneys and Law Firms
`
`John D. Vandenberg, Portland, OR, for Petitioner.
`
`Mark D. Harris, New York, NY, for Respondent.
`
`Curtis E. Gannon, for the United States as amicus curiae, by
`special leave of the Court, supporting the Respondent.
`
`Thomas G. Hungar, Matthew D. McGill, Jonathan C. Bond,
`Gibson, Dunn & Crutcher LLP, Washington, D.C., James E.
`Geringer, Jeffrey S. Love, John D. Vandenberg, Counsel of
`Record, Philip Warrick, Klarquist Sparkman, LLP, Portland,
`OR, for Petitioner.
`
`Sean M. Handler, Daniel C. Mulveny, Kessler, Topaz,
`Meltzer & Check LLP, Radnor, PA, Mark D. Harris, Counsel
`of Record, James H. Shalek, Celia V. Cohen, Proskauer Rose
`LLP, New York, NY, Steven M. Bauer, John E. Roberts,
`Anthony H. Cataldo, Jinnie Reed, Proskauer Rose LLP,
`Boston, MA, for Respondent.
`
`Opinion
`
`Justice GINSBURG delivered the opinion of the Court.
`
`[1]
` The Patent Act requires that a patent specification
`“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 (2006 ed.)
`(emphasis added). This case, involving a heart-rate monitor
`used with exercise equipment, concerns the proper reading of
`the statute's clarity and precision demand. According to the
`Federal Circuit, a patent claim passes the § 112, ¶ 2 threshold
`so long as the claim is “amenable to construction,” and the
`claim, as construed, is not “insolubly ambiguous.” 715 F.3d
`891, 898–899 (2013). We conclude that the Federal Circuit's
`formulation, which tolerates some ambiguous claims but not
`others, does not satisfy the statute's definiteness requirement.
`In place of the “insolubly ambiguous” standard, we hold that
`a patent is invalid for indefiniteness if its claims, read in light
`of the specification delineating the patent, and the prosecution
`history, fail to inform, with reasonable certainty, those skilled
`in the art about the scope of the invention. Expressing no
`opinion on the validity of the patent-in-suit, we remand,
`instructing the Federal Circuit to decide the case employing
`the standard we have prescribed.
`
`I
`
`[2]
` Authorized by the Constitution “[t]o promote the
`Progress of Science and useful Arts, by securing for limited
`Times to ... Inventors the exclusive Right to their ...
`Discoveries,” Art. I, § 8, cl. 8, Congress has enacted patent
`laws rewarding inventors with a limited monopoly. “Th[at]
`monopoly is a property right,” and “like any property right, its
`boundaries should be clear.” Festo Corp. v. Shoketsu Kinzoku
`Kogyo Kabushiki Co., 535 U.S. 722, 730, 122 S.Ct. 1831,
`152 L.Ed.2d 944 (2002). See also Markman v. Westview
`Instruments, Inc., 517 U.S. 370, 373, 116 S.Ct. 1384, 134
`L.Ed.2d 577 (1996) (“It has long been understood that a
`patent must describe the exact scope of an invention and
`its manufacture....”). Thus, when Congress enacted the first
`Patent Act in 1790, it directed that patent grantees file a
`written specification “containing a description ... of the thing
`or things ... invented or discovered,” which “shall be so
`particular” as to “distinguish the invention or discovery from
`other things before known *2125 and used.” Act of Apr. 10,
`1790, § 2, 1 Stat. 110.
`
`The patent laws have retained this requirement of definiteness
`even as the focus of patent construction has shifted. Under
`early patent practice in the United States, we have recounted,
`it was the written specification that “represented the key to
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`4
`
`4
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`the patent.” Markman, 517 U.S., at 379, 116 S.Ct. 1384.
`Eventually, however, patent applicants began to set out the
`invention's scope in a separate section known as the “claim.”
`See generally 1 R. Moy, Walker on Patents § 4.2, pp. 4–17
`to 4–20 (4th ed. 2012). The Patent Act of 1870 expressly
`conditioned the receipt of a patent on the inventor's inclusion
`of one or more such claims, described with particularity and
`distinctness. See Act of July 8, 1870, § 26, 16 Stat. 201 (to
`obtain a patent, the inventor must “particularly point out and
`distinctly claim the part, improvement, or combination which
`[the inventor] claims as his invention or discovery”).
`
`The 1870 Act's definiteness requirement survives today,
`largely unaltered. Section 112 of the Patent Act of 1952,
`applicable to this case, requires the patent applicant to
`conclude the specification with “one or more claims
`particularly pointing out and distinctly claiming the subject
`matter which the applicant regards as his invention.” 35
`U.S.C. § 112, ¶ 2 (2006 ed.). A lack of definiteness renders
`invalid “the patent or any claim in suit.” § 282, ¶ 2(3). 1
`
`II
`
`A
`
`The patent in dispute, U.S. Patent No. 5,337,753 ('753
`patent), issued to Dr. Gregory Lekhtman in 1994 and
`assigned to respondent Biosig Instruments, Inc., concerns a
`heart-rate monitor for use during exercise. Previous heart-
`rate monitors, the patent asserts, were often inaccurate in
`measuring the electrical signals accompanying each heartbeat
`(electrocardiograph or ECG signals). The inaccuracy was
`caused by electrical signals of a different sort, known as
`electromyogram or EMG signals, generated by an exerciser's
`skeletal muscles when, for example, she moves her arm, or
`grips an exercise monitor with her hand. These EMG signals
`can “mask” ECG signals and thereby impede their detection.
`App. 52, 147.
`
`Dr. Lekhtman's invention claims to improve on prior art
`by eliminating that impediment. The invention focuses on a
`key difference between EMG and ECG waveforms: while
`ECG signals detected from a user's left hand have a polarity
`opposite to that of the signals detected from her right hand, 2
`EMG signals from each hand have the same polarity. The
`patented device works by measuring equalized EMG signals
`detected at each hand and then using circuitry to subtract the
`
`identical EMG signals from each other, thus filtering out the
`EMG interference.
`
`*2126 As relevant here, the '753 patent describes a heart-rate
`monitor contained in 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.” The device is
`illustrated in figure 1 of the patent, id., at 41, reproduced in
`the Appendix to this opinion.
`
`Claim 1 of the '753 patent, which contains the limitations
`critical to this dispute, refers to a “heart rate monitor for
`use by a user in association with exercise apparatus and/or
`exercise procedures.” Id., at 61. The claim “comprise[s],”
`among other elements, an “elongate member” (cylindrical
`bar) with a display device; “electronic circuitry including a
`difference amplifier”; and, on each half of the cylindrical
`bar, a live electrode and a common electrode “mounted ...
`in spaced relationship with each other.” Ibid. 3 The claim
`sets forth additional elements, including that the cylindrical
`bar is to be held in such a way that each of the user's hands
`“contact[s]” both electrodes on each side of the bar. Id., at
`62. Further, the EMG signals detected by the two electrode
`pairs are to be “of substantially equal magnitude and phase”
`so that the difference amplifier will “produce a substantially
`zero [EMG] signal” upon subtracting the signals from one
`another. Ibid.
`
`B
`
`The dispute between the parties arose in the 1990's,
`when Biosig allegedly disclosed the patented technology
`to StairMaster Sports Medical Products, Inc. According to
`Biosig, StairMaster, without ever obtaining a license, sold
`exercise machines that included Biosig's patented technology,
`and petitioner Nautilus, Inc., continued to do so after
`acquiring the StairMaster brand. In 2004, based on these
`allegations, Biosig brought a patent infringement suit against
`Nautilus in the U.S. District Court for the Southern District
`of New York.
`
`With Biosig's lawsuit launched, Nautilus asked the U.S.
`Patent and Trademark Office (PTO) to reexamine the '753
`patent. The reexamination proceedings centered on whether
`the patent was anticipated or rendered obvious by prior art
`—principally, a patent issued in 1984 to an inventor named
`Fujisaki, which similarly disclosed a heart-rate monitor
`using two pairs of electrodes and a difference amplifier.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`5
`
`5
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`Endeavoring to distinguish the '753 patent from prior art,
`Biosig submitted a declaration from Dr. Lekhtman. The
`declaration attested, among other things, that the '753 patent
`sufficiently informed a person skilled in the art how to
`configure the detecting electrodes so as “to produce equal
`EMG [signals] from the left and right hands.” Id., at
`160. Although the electrodes' design variables—including
`spacing, shape, size, and material—cannot be standardized
`across all exercise machines, Dr. Lekhtman explained, a
`skilled artisan could undertake a “trial and error” process
`of equalization. This would entail experimentation with
`different electrode configurations in order to optimize EMG
`signal cancellation. Id., at 155–156, 158. 4 *2127 In 2010,
`the PTO issued a determination confirming the patentability
`of the '753 patent's claims.
`
`Biosig thereafter reinstituted its infringement suit, which the
`parties had voluntarily dismissed without prejudice while
`PTO reexamination was underway. In 2011, the District Court
`conducted a hearing to determine the proper construction of
`the patent's claims, see Markman v. Westview Instruments,
`Inc., 517 U.S. 370, 116 S.Ct. 1384, 134 L.Ed.2d 577
`(1996) (claim construction is a matter of law reserved
`for court decision), including the claim term “in spaced
`relationship with each other.” According to Biosig, that
`“spaced relationship” referred to the distance between the live
`electrode and the common electrode in each electrode pair.
`Nautilus, seizing on Biosig's submissions to the PTO during
`the reexamination, maintained that the “spaced relationship”
`must be a distance “greater than the width of each electrode.”
`App. 245. The District Court ultimately construed the term
`to mean “there is a defined relationship between the live
`electrode and the common electrode on one side of the
`cylindrical bar and the same or a different defined relationship
`between the live electrode and the common electrode on the
`other side of the cylindrical bar,” without any reference to the
`electrodes' width. App. to Pet. for Cert. 43a–44a.
`
`Nautilus moved for summary judgment, arguing that the term
`“spaced relationship,” as construed, was indefinite under §
`112, ¶ 2. The District Court granted the motion. Those words,
`the District Court concluded, “did not tell [the court] or
`anyone what precisely the space should be,” or even supply
`“any parameters” for determining the appropriate spacing. Id.,
`at 72a.
`
`The Federal Circuit reversed and remanded. A claim is
`indefinite, the majority opinion stated, “only when it is ‘not
`amenable to construction’ or ‘insolubly ambiguous.’ ” 715
`
`F.3d 891, 898 (2013) (quoting Datamize, LLC v. Plumtree
`Software, Inc., 417 F.3d 1342, 1347 (C.A.Fed.2005)).
`Under that standard, the majority determined, the '753
`patent survived indefiniteness review. Considering first
`the “intrinsic evidence”—i.e., the claim language, the
`specification, and the prosecution history—the majority
`discerned “certain inherent parameters of the claimed
`apparatus, which to a skilled artisan may be sufficient to
`understand the metes and bounds of ‘spaced relationship.’
`” 715 F.3d, at 899. These sources of meaning, the majority
`explained, make 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”; that is so “because claim
`1 requires the live and common electrodes to independently
`detect electrical signals at two distinct points of a hand.”
`Ibid. Furthermore, the majority noted, 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.” Ibid. The claim's
`functional provisions, the majority went on to observe, shed
`additional light on the meaning of “spaced relationship.”
`Surveying the record before the PTO on reexamination,
`the majority concluded that a skilled artisan would know
`that she could attain the indicated functions of equalizing
`and removing EMG signals by adjusting design variables,
`including spacing.
`
`In a concurring opinion, Judge Schall reached the majority's
`result employing “a more limited analysis.” Id., at 905. Judge
`Schall accepted the majority's recitation of the definiteness
`standard, under which claims amenable to construction
`are nonetheless indefinite when “the construction remains
`insolubly ambiguous.” Ibid. (internal *2128 quotation
`marks omitted). The District Court's construction of “spaced
`relationship,” Judge Schall maintained, was sufficiently clear:
`the term means “there is a fixed spatial relationship between
`the live electrode and the common electrode” on each side
`of the cylindrical bar. Ibid. Judge Schall agreed with the
`majority that the intrinsic evidence discloses inherent limits
`of that spacing. But, unlike the majority, Judge Schall did
`not “presum[e] a functional linkage between the ‘spaced
`relationship’ limitation and the removal of EMG signals.” Id.,
`at 906. Other limitations of the claim, in his view, and not the “
`‘spaced relationship’ limitation itself,” “included a functional
`requirement to remove EMG signals.” Ibid.
`
`We granted certiorari, 571 U.S. ––––, 134 S.Ct. 896, 187
`L.Ed.2d 702 (2014), and now vacate and remand.
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`6
`
`6
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`III
`
`A
`
`[5]
`[4]
`[3]
` Although the parties here disagree on
`
`
`the dispositive question—does the '753 patent withstand
`definiteness scrutiny—they are in accord on several aspects
`of the § 112, ¶ 2 inquiry. First, definiteness is to be evaluated
`from the perspective of someone skilled in the relevant art.
`See, e.g., General Elec. Co. v. Wabash Appliance Corp.,
`304 U.S. 364, 371, 58 S.Ct. 899, 82 L.Ed. 1402 (1938).
`See also § 112, ¶ 1 (patent's specification “shall contain
`a written description of the invention, and of the manner
`and process of making and using it, in such full, clear,
`concise, and exact terms as to enable any person skilled in
`the art to which it pertains, or with which it is most nearly
`connected, to make and use the same” (emphasis added)).
`Second, in assessing definiteness, claims are to be read in light
`of the patent's specification and prosecution history. See, e.g.,
`United States v. Adams, 383 U.S. 39, 48–49, 86 S.Ct. 708, 15
`L.Ed.2d 572 (1966) (specification); Festo Corp. v. Shoketsu
`Kinzoku Kogyo Kabushiki Co., 535 U.S. 722, 741, 122 S.Ct.
`1831, 152 L.Ed.2d 944 (2002) (prosecution history). Third,
`“[d]efiniteness is measured from the viewpoint of a person
`skilled in [the] art at the time the patent was filed.” Brief for
`Respondent 55 (emphasis added). See generally Sarnoff &
`Manzo, An Introduction to, Premises of, and Problems With
`Patent Claim Construction, in Patent Claim Construction in
`the Federal Circuit 9 (E. Manzo ed. 2014) (“Patent claims ...
`should be construed from an objective perspective of a
`[skilled artisan], based on what the applicant actually claimed,
`disclosed, and stated during the application process.”).
`
`The parties differ, however, in their articulations of just
`how much imprecision § 112, ¶ 2 tolerates. In Nautilus'
`view, a patent is invalid when a claim is “ambiguous, such
`that readers could reasonably interpret the claim's scope
`differently.” Brief for Petitioner 37. Biosig and the Solicitor
`General would require only that the patent provide reasonable
`notice of the scope of the claimed invention. See Brief for
`Respondent 18; Brief for United States as Amicus Curiae 9–
`10.
`
` [7]
`[6]
` Section 112, we have said, entails a “delicate
`balance.” Festo, 535 U.S., at 731, 122 S.Ct. 1831. On the
`one hand, the definiteness requirement must take into account
`the inherent limitations of language. See ibid. Some modicum
`of uncertainty, the Court has recognized, is the “price of
`
`ensuring the appropriate incentives for innovation.” Id., at
`732, 122 S.Ct. 1831. One must bear in mind, moreover,
`that patents are “not addressed to lawyers, or even to the
`public generally,” but rather to those skilled in the relevant
`art. Carnegie Steel Co. v. Cambria Iron Co., 185 U.S. 403,
`437, 22 S.Ct. 698, 46 L.Ed. 968 (1902) (also stating that
`“any description which is *2129 sufficient to apprise [steel
`manufacturers] in the language of the art of the definite
`feature of the invention, and to serve as a warning to others of
`what the patent claims as a monopoly, is sufficiently definite
`to sustain the patent”). 5
`
` [9]
`[8]
` 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.’ ” Markman, 517
`U.S., at 373, 116 S.Ct. 1384 (quoting McClain v. Ortmayer,
`141 U.S. 419, 424, 12 S.Ct. 76, 35 L.Ed. 800 (1891)). 6
`Otherwise there would be “[a] zone of uncertainty which
`enterprise and experimentation may enter only at the risk
`of infringement claims.” United Carbon Co. v. Binney &
`Smith Co., 317 U.S. 228, 236, 63 S.Ct. 165, 87 L.Ed. 232
`(1942). And absent a meaningful definiteness check, we
`are told, patent applicants face powerful incentives to inject
`ambiguity into their claims. See Brief for Petitioner 30–32
`(citing patent treatises and drafting guides). See also Federal
`Trade Commission, The Evolving IP Marketplace: Aligning
`Patent Notice and Remedies With Competition 85 (2011)
`(quoting testimony that patent system fosters “an incentive to
`be as vague and ambiguous as you can with your claims” and
`“defer clarity at all costs”). 7 Eliminating that temptation is in
`order, and “the patent drafter is in the best position to resolve
`the ambiguity in ... patent claims.” Halliburton Energy Servs.,
`Inc. v. M–I LLC, 514 F.3d 1244, 1255 (C.A.Fed.2008). See
`also Hormone Research Foundation, Inc. v. Genentech, Inc.,
`904 F.2d 1558, 1563 (C.A.Fed.1990) (“It is a well-established
`axiom in patent law that a patentee is free to be his or her own
`lexicographer....”).
`
` [11]
`[10]
` To determine the proper office of the definiteness
`command, therefore, we must reconcile concerns that tug in
`opposite directions. Cognizant of the competing concerns,
`we read § 112, ¶ 2 to require 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. The definiteness requirement, so
`understood, mandates clarity, while recognizing that absolute
`precision is unattainable. The standard we adopt accords with
`opinions of this Court stating that “the certainty which the law
`requires in patents is not greater than is reasonable, having
`
` © 2015 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`7
`
`

`
`Nautilus, Inc. v. Biosig Instruments, Inc., 134 S.Ct. 2120 (2014)
`189 L.Ed.2d 37, 82 USLW 4433, 110 U.S.P.Q.2d 1688, 14 Cal. Daily Op. Serv. 6024...
`
`regard to their subject-matter.” Minerals Separation, Ltd. v.
`Hyde, 242 U.S. 261, 270, 37 S.Ct. 82, 61 L.Ed. 286 (1916).
`See *2130 also United Carbon, 317 U.S., at 236, 63 S.Ct.
`165 (“claims must be reasonably clear-cut”); Markman, 517
`U.S., at 389, 116 S.Ct. 1384 (claim construction calls for “the
`necessarily sophisticated analysis of the whole document,”
`and may turn on evaluations of expert testimony).
`
`B
`
`In resolving Nautilus' definiteness challenge, the Federal
`Circuit asked whether the
`'753 patent's c