Summary
The United States Court of Appeals for the Federal Circuit reversed and remanded the district court’s summary judgment holding that claims of Biosig’s heart-rate-monitor patent were invalid for indefiniteness. The court held that the term “spaced relationship” was amenable to construction and sufficiently definite in light of the patent’s claim language, specification, figures, functionality, and prosecution history.
Topics
Practice areas
Questions Presented
- Whether the term "spaced relationship" in claims 1 and 11 of the '753 patent was indefinite under 35 U.S.C. § 112, paragraph 2.
- Whether the claims were indefinite because they used functional limitations describing the capability of substantially removing EMG signals.
- Whether the claims impermissibly claimed both an apparatus and a method of use under IPXL Holdings.
Holdings
- The term "spaced relationship" was not indefinite because it was amenable to construction and the intrinsic and extrinsic evidence provided sufficient clarity regarding its metes and bounds to a person of ordinary skill in the art.
- The use of functional limitations describing the capability of substantially removing EMG signals did not render the apparatus claims indefinite.
- The claims were not indefinite under IPXL Holdings because they claimed an apparatus having functional capabilities, not an apparatus together with method steps that had to be performed by a user.
Key quotations
“The disputed term “spaced relationship” does not suffer from indefiniteness.” (715 F.3d at 899)
“Breadth is not indefiniteness.” (715 F.3d at 902)
“Indeed, claim 1 of the ’753 patent is clearly limited to a heart rate monitor possessing the recited structure that is capable of substantially removing EMG signals. It is not indefinite.” (715 F.3d at 904)
Factual background
Biosig owned the '753 patent, which claimed a heart-rate monitor using live and common electrodes arranged on an elongate member to detect heart signals while reducing electromyogram noise. Biosig alleged that Nautilus's exercise equipment infringed claims 1 and 11. The district court construed the term "spaced relationship" but held the term indefinite because the patent did not specify precise spacing parameters.
Procedural history
Biosig initially sued Nautilus for patent infringement in 2004. During that action, Nautilus sought reexamination of the patent, the parties voluntarily dismissed the action without prejudice, and the PTO ultimately confirmed patentability without amendment. Biosig refiled the infringement action in October 2010. After claim construction, the district court denied summary judgment on infringement as premature but granted summary judgment that the term "spaced relationship" was indefinite; the court denied reconsideration, and Biosig timely appealed.
Remand instructions
The district court's indefiniteness determination was reversed. The case was remanded for further proceedings; other aspects of the patent-invalidity defense could be considered on remand.