Page 6 - Litigation

S6 | MONDAY, MAY 5, 2014 | Litigation
| NYLJ.COM

Will ‘Nautilus’ Signiicantly Change

The Strength of Patents?

OCK
GST
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be able to use the inventor’s idea by simply ages investment in competing technology monitor that was very similar to Biosig’s pat-
BY RICHARD F. MARTINELLI making those components 2.25 inches apart. due to uncertainty in the scope of the patent. ent. In the reexamination proceeding, Biosig
AND NICHOLAS H. LAM
Thus, skilled patent drafters typically avoid Nautilus, the petitioner, contends that the distinguished its invention over the earlier
Tdrafting claims—the portion of the patent Federal Circuit has set the balance between heart rate monitor because, according to Bio-
here is one case on the U.S. Supreme that lays out the metes and bounds of pro- these ideals too far in favor of patentees and sig, the sensors in its invention were spaced
Court’s patent heavy docket this term tection—with overly precise language. This created an unacceptable zone of uncertainty in a particular way that resulted in the muscle
that has the potential to impact every practice is largely sanctioned by the patent around the scope of each patent. Nautilus signals from the left and right hands being
issued patent. That case is Nautilus v. Bio- law, which has long recognized that unduly asks the Supreme Court to require more pre- substantially equal. The prior art reference
sig Instruments.1 Nautilus has the potential narrow patents do not provide adequate cision from patentees and make it easier for
cited by Nautilus had left and right handed

for such broad impact because it addresses rights to incentivize inventors to disclose defendants to prove indeiniteness.
sensors and combined their signals to remove
how precise patentees must be in deining their discoveries.
the muscle signal, but it did not speciically
their invention; in patent parlance, the issue On the other side is the public. A patentee History of the Case
state that the signals generated by its left
is called indeiniteness. Two compelling and receives a limited monopoly from the gov- and right sensors were substantially equal.
competing ideals underlie the debate.
ernment that allows her to exclude all oth- The dispute between the parties involves The problem for Biosig was that its pat-
On one side is the inventor trying to ers from practicing the invention. In return, heart rate monitors for treadmills and other ent did not clearly describe the importance
describe in words an invention that, by the issued patent informs the public of the exercise equipment. These heart rate moni- of sensor spacing to the generation of equal
definition, has never existed before. This inventor’s technical achievements thereby tors use sensors located in the equipment’s muscle signals. To ill this gap, Biosig submit-
already dificult task is somewhat at odds promoting science and the useful arts. But handles to read the user’s pulse while exercis- ted a declaration of the inventor explaining

with absolute precision because an overly there is a strong policy interest in not allow- ing. A problem with these types of sensors is this fact to the Patent Ofice during reexami-
precise patent might supericially restrict the ing patentees to extend their monopoly that, in addition to detecting the desired heart nation. In view of the declaration, the Patent
scope of the inventor’s patent. For example, beyond what is fairly due. The claims of a signals, they also detect unwanted impulses Ofice reconirmed the patentability of Biosig’s
if the inventor built a machine where two patent are intended to provide notice to the generated by a person’s muscles that interfere invention.
components were 2 inches apart, a patent public of the boundaries of the exclusionary with the heart rate measurement. Biosig’s When the case returned to litigation the
drafter would be loath to limit the patent to right, much like a deed to land. Vague claims, invention is a device that employs sensors district court set to the task of construing the
claiming that these components were exactly however, create a zone of uncertainty over the under both of the user’s hands. Because of “spaced relationship” limitation that Biosig
2 inches apart. After all, a competitor might
boundaries of the patentee’s monopoly to the the nature of the signals involved, combining relied on to distinguish its patent over the

detriment of the public. Thus, when “clever” the signal from the user’s two hands sub- prior art. The court construed the limitation
patent drafters write vague and malleable tracts out the muscle signal and ampliies twice. Biosig objected to the court’s first
patents, they frustrate the patent bargain. the heart signal.
tentative construction and convinced the
RICHARD F. MARTINELLI is a partner and NICHOLAS H. This problem is twofold. An ambiguous patent After Biosig sued Nautilus for infringement, court to adopt a broader construction. Nau-
LAM is an associate at Orrick, Herrington & Sutclife fails to adequately teach the inventor’s new Nautilus asked the Patent Ofice to reexamine tilus moved for summary judgment that this
in New York.
discovery to the public and it also discour-
Biosig’s patent in view of a prior art heart rate
broader construction was indeinite. When