Biosig Inst., Inc. v. Nautlius, Inc., __ F.3d ___ (Fed. Cir. Apr. 27, 2015) (Newman, Schall, WALLACH) (S.D.N.Y.: Hellerstein) (3 of 5 stars)

Federal Circuit maintains its reversal of a summary judgment of indefiniteness after remand from the Supreme Court.  The patent was directed to a heart rate monitor with electrodes “in a spaced relationship” from one another.  That term was not indefinite under the new standard, i.e., the claims did not “fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”  After commenting that “reasonableness” is “the core of much of the common law,” and collecting cases from other areas of law that applied a “reasonable certainty” standard or something similar, the court observed that this standard “does not render all prior Federal Circuit and district court cases inapplicable.”  Slip op. at 12.

Upon de novo review of the intrinsic evidence, the court determined that the same parts of the specification and prosecution history it relied upon in its prior opinion still demonstrated the claims’ scope did not lack “reasonable certainty.”  The specification showed that the “spaced relationship” was neither infinitesimally small nor greater than the width of the user’s hands.  Moreover, the “spaced relationship” had to be such that it performs the function (recited elsewhere in the claim) of substantially removing EMG signals from the electrodes.  An inventor declaration during prosecution confirmed that the skilled artisan would know how to select a “spaced relationship” to implement that function.