1 1 1 AIPLA American Intellectual Property Law Association Standard for Indefiniteness– Nautilus, Inc. v. Biosig Instruments, Inc. Stephen S. Wentsler Pearne & Gordon LLP IP Practice In Japan Committee Pre-Meeting AIPLA Annual Meeting October 21, 2014

2 2 2 AIPLA Biosig Instruments – Heart Rate Monitor Electrode pair (9,11) for hand 200 and electrode pair (13,15) for hand 100. Each pair includes a live electrode (9, 13) and a common electrode (11, 15). The live and common electrodes of each pair are spaced apart.

3 3 3 AIPLA Biosig obtains patent (U.S. Pat. No. 5,337,753) Claim 1 requires: –a first live electrode and a first common electrode mounted on said first half in spaced relationship with each other; –a second live electrode and a second common electrode mounted on said second half in spaced relationship with each other;

4 4 4 AIPLA Nautilus, Inc. sells exercise equipment Nautilus sells exercise equipment arguably covered by at least claim 1 of the Biosig patent Biosig initiates patent infringement action against Nautilus Nautilus argues that “spaced relationship” renders the claims indefinite under 35 U.S.C. §112, second paragraph.

5 5 5 AIPLA Statutory Requirement of Definiteness Pre-AIA 35 U.S.C. § 112, second paragraph –The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention. Post-AIA 35 U.S.C. §112(b) –(b) Conclusion.--The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.

6 6 6 AIPLA United States Court of Appeals for the Federal Circuit Biosig v. Nautilus, 715 F.3d 891 (April 26, 2013) –Reversed the District Court by finding that the claim feature “spaced relationship” was definite. –Rule - Claim features are definite if they are “amenable to construction” and not “insolubly ambiguous.” –Application – Definite since spacing can’t be greater than width of hand or so small as to effectively merge the electrodes together.

7 7 7 AIPLA Supreme Court of the United States Nautilus v. Biosig, 134 S.Ct (June 2, 2014) –Federal Circuit decision vacated and case remanded –“Amenable to Construction” and “Insolubly Ambiguous” standards overruled S.Ct. – These standards lack the precision that §112, second paragraph demands.

8 8 8 AIPLA Supreme Court of the United States Nautilus v. Biosig, 134 S.Ct (June 2, 2014) –New Rule – 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.

9 9 9 AIPLA Supreme Court of the United States Nautilus v. Biosig, 134 S.Ct (June 2, 2014) –Reaffirmed Principles Definiteness is to be evaluated from the perspective of a person skilled in the relevant art Claims are to be read in light of the patent’s specification and prosecution history Definiteness is to be measured as of the time of the patent application

10 10 AIPLA Recent Federal Circuit Case Following Nautilus Interval Licensing LLC v. AOL, Inc., (Sept. 10, 2014) –Interval Licensing argues AOL, Apple, Google, and Yahoo! infringing its patents: U.S. Pat. No. 6,034,652 U.S. Pat. No. 6,788,314 –Patents directed to an attention manager for occupying the peripheral attention of a person in the vicinity of a display device.

11 11 AIPLA Interval Licensing LLC v. AOL, Inc. –Method claims require step of: Providing to the content display system a set of instructions for enabling the content display system to selectively display, in an unobtrusive manner that does not distract a user of the display device or an apparatus associated with the display device from a primary interaction with the display device or apparatus, an image or images generated from a set of content data.

12 12 AIPLA Interval Licensing LLC v. AOL, Inc. –The District Court found that the terms “in an unobtrusive manner” and “does not distract” a user, whether used together or separately, are indefinite. –Interval appealed The Federal Circuit agreed with the District Court that the terms are indefinite

13 13 AIPLA Interval Licensing LLC v. AOL, Inc. When viewed in light of the specification and prosecution history, the phrase fails to “inform those skilled in the art about the scope of the invention with reasonable certainty.” “Unobtrusive manner” is highly subjective –On its face, provides little guidance to one of skill in the art –The specification did not provide clarity to the subjective claim term

14 14 AIPLA Interval Licensing LLC v. AOL, Inc. Terms of Degree are not inherently indefinite: –“We do not understand the Supreme Court to have implied in Nautilus, and we do not hold today, that terms of degree are inherently indefinite.” Objective boundaries required –“The claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” –Highly subjective terms are likely to be held indefinite

15 15 AIPLA Interval Licensing LLC v. AOL, Inc. Court reluctant to narrow a claim meaning to a definite example listed in the specification –“… We decline to cull out a single “e.g.” phrase from a lengthy written description to serve as the exclusive definition of a facially subjective claim term.” –Nautilus disfavors “post hoc” efforts to “ascribe some meaning to a patent’s claims”

16 16 AIPLA Thanks for your attention! Questions? Stephen S. Wentsler Pearne & Gordon LLP 1801 East 9th Street, Suite 1200 Cleveland, OH tel +1 (216)