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1

QUESTIONS PRESENTED

1. Whether Petitioner has shown that the FederalCircuit's test for patent indefiniteness under35 D.S.C. § 112, 'll2 conflicts with this Court'sprecedent in light of the D.S. Patent andTrademark Office recently informing this Courtthat there was no conflict.

I1. Whether the Federal Circuit erred in givingrespect to the presumption ofvalidity specified byCongress in 35 D.S.C. § 282 in considering theinvalidity defense of indefiniteness under35 D.S.C. §112, 'll2.

11

CORPORATE DISCLOSURE STATEl\ffiNTPURSUANT TO SUPREME COURT RULE 29.6

Biosig Instruments, Inc. has no parentcorporation, and no public1y held corporation owns10% or more ofits stock.

In

TABLE OF CONTENTS

Page

QUESTIONS PRESENTED i

CORPORATE DISCLOSURE STATEMENT ii

TABLE OF CONTENTS iii

TABLE OF AUTHORITIES v

INTRODUCTION 1

STATEMENT OF THE CASE 3

A. THE '753 PATENTED INVENTION 5

B. THE PROSECUTION HISTORYINCLUDING THE PATENTOFFICE'S REJECTION OFPETITIONER'S ARGUMENTSREGARDING FUJISAKI ET AL 12

C. THE CLAIMS HAVE NOTUNDERGONE"METAMORPHOSES" 17

REASONS FOR DENYING THE PETITION 22

1. PETITIONER FAlLS TO PROVIDE ABASIS FOR GRANTING ITSPETITION 22

A. PETITIONER'S ARGUMENTS FAILBECAUSE THIS COURTRECENTLY DENIED A PETITIONFOR CERTIORARI AFTER FULLYCONSIDERING THE VERY SAMEARGUMENTS 22

IV

B. PETITIONER FAlLS TO SHOWTHAT THE FEDERAL CIRCUIT'SVIEW IS INCOMPATIBLE WITHTHIS COURT'S INTERPRETATION ... 24

C. THE FEDERAL CIRCUIT HAS NOTMISINTERPRETED THE PATENTSTATUTE 26

D. THE FEDERAL CIRCUIT HAS NOTIMPROPERLY ALLOWEDVAGUECLAIMS TO BE CURED THROUGHCLAIM CONSTRUCTION 28

E. PETITIONER'S DATED CASEFROM THE SECOND CIRCUITPROVIDES NO BASIS FORGRANTING ITS PETITION 29

11. THE FEDERAL CIRCUIT DID NOTCOMMIT LEGAL ERROR BY GIVINGRESPECT TO THE PRESUMPTIONOF VALIDITY IN CRAFTING ITSINDEFINITENESS TEST 30

II1.THIS CASE IS NOT AN IDEALVEHICLE FOR CONSIDERINGINDEFINITENESS 32

IV.THERE IS NO ERROR REGARDINGINDEFINITENESS THAT HASDAMAGED OUR PATENT SYSTEM 34

CONCLUSION 35

v

TABLE OF AUTHORITIES

Pagets)

Cases

Applera Corp. u. Enzo BioChem, Inc.,131 S. Ct. 3020 (2011) passim

Applera Corp. u. Enzo Biochem, Inc.,131 S. Ct. 847 (2010) 23

Biosig Instruments, Inc. u. Nautilus, Inc.,715 F.3d 891 (Fed. Cir, 2013) passim

Eibel Process Co. u.Minnesota & Ontario Paper Co.,

261 D.S. 45 (1923) 25

Exxon Research & Eng'g Co. u.United States,

265 F.3 1371 (Fed. Cir. 2001) 27, 31

Festo Corp. U.

Shoketsu Kinzoku Kogyo Kabushiki Co.,535 D.S. 722 (2002) 26

Halliburton Energy Serus., Inc. U. M-I LLC,514 F3.d 1244 (Fed. Cir. 2008) 27

Markman u. Westuiew Instruments, Inc.,517 D.S. 370 (1996) 2, 26, 27, 31

Microsoft Corp. U. i4i Ltd. Partnership,131 S. Ct. 2238 (2011) 30, 31

Minerals Seperation, Ltd. u. Hyde,242 D.S. 261, 270 (1916) 1-2, 25, 31

Norton Co. U. Bendix Corp.,449 F.2d 553 (2d Cir. 1971) 29

VI

Star Sei., Ine. v. R.J. Reynolds Tobaeeo Co.,537 F.3d 1357 (Fed. Cir. 2008) 27

United Carbon CO. V. Binney & Smith Co.,317 V.S. 228 (1942) 31

Statutes

35 V.S.C. § 112, <[1 29, 30

35 V.S.C. § 112, <[ 2 4, 27

35 V.S.C. § 282 30

35 V.S.C. § 282(a) 3

Other Authorities

Reply Brief ofPetitioner Applera Corp.,Applera Corp. V. Enzo Bioehem, Ine.,131 S. Ct. 3020 (2011), No. 10-426

(November 22, 2011) 24

Brieffor the United States as Amicus Curiae,Applera Corp. V. Enzo Bioehem, Ine.,131 S. Ct. 3020 (2011), No. 10-426

(May 17, 2011) 23, 28, 31, 33

Initial Brief of Respondent Enzo Biochem, Inc.,Applera Corp. V. Enzo Bioehem, Ine.,131 S. Ct. 3020 (2011), No. 10-426

(November, 11, 2010) 24

Brief of Public Knowledge and theElectronic Frontier Foundation as Amici Curiaefor the Petitioner, Nautilus, Ine. V.

Biosig Instruments, Ine., No. 13-369(2013) 34

1

INTRODUCTION

Petitioner essentially presents the same issueregarding indefiniteness that was recently presentedto this Court in 2011. After requesting and receivingthe United States Patent and Trademark Office's("USPTO") opinion on the issue in that case, thisCourt denied the petition for certiorari on theindefiniteness standard. Applera Corp. u. EnzoBioChem, Inc., 131 S. Ct. 3020 (2011). As nothinghas changed, there is no reason to grant the Petitionin this case.

Petitioner fails to present a compelling reasonthat this case merits this Court's attention.Petitioner lost on appeal because it failed to provethat Respondent's D.S. Patent No. 5,337,753 ("the'753 Patent") was invalid for indefiniteness.Petitioner did not lose because the Court applied thewrong analysis. Rather, Petitioner lost becauseRespondent showed, and the Federal Circuit agreed,that the intrinsic record contains a bright-line testusing standard electrical equipment such as anoscilloscope and meters for determining whatstructures are within the claim scope. Petitioner hasno real response on the merits of the case. Petitionerdoes not even mention the oscilloscope/meter testingin its Petition, which was the basis of the FederalCircuit decision. Moreover, Petitioner has neuercontended that it cannot reproduce theoscilloscope/meter testing or that it creates any zoneof uncertainty.

Regarding the legal standards, Petitioner iswrong that the Federal Circuit has adopted anindefiniteness standard that conflicts with thisCourt's precedent. For example, In Minerals

2

Separation, Ltd. v. Hyde, this Court explained that"the certainty which the law requires in patents isnot greater than is reasonable, having regard to theirsubject matter." 242 V.S. 261, 270 (1916) (emphasisadded). Likewise, the Federal Circuit explained inthis case, a claim is indefinite if "reasonable effortsat claim construction result in adefinition that doesnot provide sufficient particularity and clarity toinform skilled artisans of the bounds of the claim."Biosig Instruments, Ine. v. Nautilus, Ine., 715 F.3d891, 898 (Fed. Cir. 2013). There is no conflictbetween this Court and the Federal Circuit on theindefiniteness standard.

The Petition should further be denied becausePetitioner offers a "multiple reasonableinterpretation" indefiniteness standard that is notcontained anywhere in this Court's precedent or inthe Federal Circuit's jurisprudence. Moreover,Petitioner's "multiple reasonable interpretation" testconflicts with this Court's decision in Markman V.

Westview Instruments, Ine. 517 V.S. 370 (1996). InMarkman, this Court recognized that patents arelegal instruments that necessarily requireconstruction by a court. Id. at 387-388. Yet,Petitioner offers a conflicting indefinitenessstandard, as Petitioner requires patent claims to beconstrued prior to a legal proceeding. VnderPetitioner's view, if a defendant is able to concoctmultiple "reasonable interpretations," then a patentis simply invalid. Thus, Petitioner urges this Courtto make a dramatic change in well-establishedpatent law that would significantly weaken, notstrengthen the patent system.

3

Finally, Petitioner's argument that thepresumption of validity somehow does not apply toan indefiniteness challenge is simply contrary to theplain language of 35 V.S.C. § 282(a). And thepresumption applies to any faetual showingsrequired in challenging the validity of issuedpatents. The Federal Circuit, therefore, did notcommit error by giving respect to the presumption ofvalidity, mandated by § 282(a), in crafting itsindefiniteness test.

STATEMENT OF THE CASE

Respondent Biosig Instruments, Inc. is a medicaldevice and exercise equipment company that makes,inter alia, heart rate monitors. Petitioner, Nautilus,Inc., is a multinational exercise equipment company.The parties' dispute sterns from Respondent havingproduced, under a non-disclosure agreement and fortesting purposes heart rate monitor produets toStairmaster, a predecessor of Petitioner, and havingthe patented technology rejeeted by Petitioner'spredecessor, only to find out later that Petitionerand its predecessors were using the claimedtechnology. After Respondent discovered thatPetitioner was indeed using Respondent's patentedtechnology, Respondent brought suit for patentinfringement in 2004.

After the litigation was commenced, it wasdismissed without prejudice subject to a tollingagreement because Petitioner twice requested exparte reexamination of the '753 Patent by theVSPTO. Both requests were granted. Afterconsidering both of Petitioner's reexaminationrequests, the VSPTO confirmed that the '753Patent claims were patentable without

4

amendment. Petitioner later filed a third requestfor ex parte reexamination, which the USPTOdenied for failing to raise a substantial newquestion of patentability.

With its '753 Patent confirmed patentable,Respondent returned to court to pursue itsinfringement claims against Petitioner. At the claimconstruction phase, the trial court construed all ofthe disputed claim terms. Petitioner moved forsummary judgment of, inter alia, invalidity forindefiniteness of the claim term "spacedrelationship", which the court granted.

On appeal, the Federal Circuit reversed the trialcourt's finding that "spaced relationship" wasindefinite under 35 U.S.C. § 112, ~ 2. Specifically,the Federal Circuit found that "it has been shownthat skilled artisans can readily ascertain thebounds of the 'spaced relationship' through testsusing standard equipment." Biosig Instruments, Inc.,715 F.3d at 903. The Federal Circuit detailed theintrinsic record and explained that "a skilled artisancould apply a test and determine the 'spacedrelationship' as pertaining to substantially removingelectromyogram ("EMG") signals. Indeed, the testwould have included a standard oscilloscopeconnected to the inputs and outputs of a differentialamplifier to view the signal wave forms and tomeasure signal characteristics." Id. at 901. Findingsupport in the intrinsic record-the patent itself andits prosecution history at the USPTO-the court ofappeals found that the '753 Patent disclosedinherent parameters of the claimed apparatus whichwould allow a person of ordinary skill in the art tounderstand the metes and bounds of "spacedrelationship." The Federal Circuit then remanded

5

the case to the trial court, and Petitioner sought thisCourt's review, seeking to change the indefinitenessstandard.

A. THE '753 PATENTED INVENTION

Electrocardiogram ("ECG") signals are generatedby the heart and are indicative of heart rate (FederalCircuit Joint Appendix (hereinafter "Fed. Cir. JA")1039-1040 at ~~33-35). Generally, heart ratemonitors detect and use ECG signals to determineheart rate. EMG signals produced by skeletalmuscles are not indicative of heart rate (Fed. Cir.JA1041 at ~36). When a person is exercising, handEMG signals are intensified (Fed. Cir. JA232 at~35). Prior art heart rate monitors were hamperedby the interference between hand EMG signals andECG signals because the EMG signals can mask theECG signals, making measurement of heart ratedifficult or not accurate (Fed. Cir. JA232 at ~~35­

36).

Dr. Lekhtman, the inventor of the '753 Patent,solved this problem of accurately measuring heartrates while exercising by, inter alia, substantiallyremoving EMG signals from ECG signals, so that theECG signals could be processed for heart ratedetermination (Fed. Cir. JA12 at 1:28-33). Based onhis invention, Respondent's claim 1 recites a "heartrate monitor for use by a user in association withexercise apparatus anel/or exercise procedures" (Fed.Cir. JA14 at 5:17-18). The first and third throughfifth claim elements describe the claimed elongatemember and the electrodes, as they recite:

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

1

6

an elongate member;

***

said elongate member cornprrsmg afirst half and a second half;

a first live electrode and a firstcommon electrode mounted on saidfirst half in spaced relationship witheach other;

a second live electrode and a secondcommon electrode mounted on saidsecond half in spaced relationship witheach other.

(Fed. Cir. JA14 at 5:20, 5:26-33). Although the"spaced relationship" is further defined byadditional claim language regarding detecting andremoving EMG signals, these claim elements canbe understood with reference to the patentspecification example reproduced below.

7

Annotated Figure 1Showing Elongate Member and Electrodes

A first live electrode and afirst cOl11mon eJectrodemounted on said first half inS J;lced reJationshi ) witheach other; ...

\-s~aCCl~ Relationship Bctween SecendCommon and I:,ve Eleelrodes~._~~-

Claim 1 also recites "eleetronic circuitry includinga difference amplifier having a first input terminal ofa first polarity and a second input terminal of asecond polarity opposite to said first polarity," whichis illustrated below (Fed. Cir. JA14 at 5:21-25).Generally, a difference or differential amplifier isdesigned to amplify the difference between signals(Fed. Cir. JA1035 at ~23).

8

Annotated Figure 2Depicting a Difference Amplifier

Electric circuitrv includinz. -a .:.::.c.::.::.:::.::...::.::::.•. :.::...... :..::.:.:.......::::•.:.::.:...:..

.;..::c.~"=::.;~ of a seconclpolarity opposite to saiclfirst polarity; ...

Claim 1 further specifies that the electrodes areelectrically conneeted to the differential amplifier(Fed. Cir. JA14 at 5:33-40). Claim 1 also has an"EMG Whereby Clause" at column 5, lines 48-61 andan "ECG Whereby Clause" at column 5, line 62through column 6, line 7 (Fed. Cir. JA14). As shownin the annotation of Figure 2 below, the "EMGWhereby" dause specifies the capability for deteetinghand EMG signals of substantially equal magnitudeand phase and substantially removing those EMGsignals with the difference amplifier (Fed. Cir. JA14at 5:42-6:7).

9

Annotated Figure 2 ShowingEMG Whereby Clauses

Detection of

Detecrion ofFirst I SeconclElectromyogram Signal Electromyogram

1y 0/""'1

Substautlnlly Zero 31

Elertromyogram SignalJJ

}-IP \) 8B8

Whereby, a first electromyogram signal will bedetected between said first live electrode and saidfirst common electrode, and a secondelectromyogram signal, of substantially equalmagnitude and phase to said first electromyogramsignal will be detected between said second liveelectrode and said second common electrode; ... sothat, when said first electromyogram signal isapplied to said first terminal and said secondelectromyogram signal is applied to said secondterminal, the first and second electromyogramsignals will be subtracted from each other toproduce a substantially zero electromyogramsignal at the output of said difference amplifier; ...

10

The "ECG Whereby" clause specifies that themonitor has the ability to detect he art ECG signalsof "substantially equal magnitude" but of "oppositephase" and the difference amplifier can process thesesignals for heart rate determination (Fed. Cir. JA14at 5:62-6:7).

Annotated Figure 2Showing ECG Whereby Clauses

FirstElectrocarrltogrupüSigual

1<:1 ,8881I

And whereby a first electrocardiograph signalwill be detected between said first live electrode andsaid first common electrode and a secondelectrocardiograph signal, of substantially equalmagnitude but of opposite phase to said firstelectrocardiograph signal will be detected betweensaid second live electrode and said second commonelectrode, so that, when said first electrocardiographsignal is applied to said first terminal and saidsecond electrocardiograph signal is applied to saidsecond terminal, the first and secondelectrocardiograph signals will be added to eachother to produce a rio n-zero elect.rocardiographsignal at the output of said difference amplifier; ...

11

The claimed he art rate monitor has the capabilityof substantially removing EMG signals duringexercise, so that ECG signals can be processed foraccurate heart rate calculations. This can beunderstood with reference to Figure 8 fromDr. Galiana's declaration reproduced below (Fed.Cir. JAI051). As shown, "I" and "2" are differentialamplifier input signals from live electrodescontaining EMG signals that mask ECG signals(Fed. Cir. JA1050-51 at ~~54-55). But the differenceamplifier output signal "3" removes EMG signalsleaving the ECG signal, and the heart rate can bedetermined from the time between the ECG signal"R" amplitudes (Fed. Cir. JAI051 at ~55).

Annotated Figure 8 from Dr. Galiana'sDeclaration (Fed. Cir. JAI051)

ECG "R" Amplitudescannot be determined;!iJvIGis not "substantiallyzero"

12

B. THE PROSECUTION HISTORYINCLUDING THE PATENT OFFICE'SREJECTION OF PETITIONER'SARGUMENTS REGARDING FUJISAKIETAL.

Petitioner substantially misrepresents theprosecution history with respect to Fujisaki et al.Petitioner instituted two reexamination proceedingsbased on the Fujisaki et al. reference and in bothinstances the USPTO confirmed the patentability ofRespondent's claims without amendment (Fed. Cir.JAI123-1124). Fujisaki et al. discloses a heart ratemonitor having "axially aligned" "cylindrical,"closely-spaced electrodes (Fed. Cir. JA558 at 1:45­48), as shown in Figure 1 below, and a differentialamplifier, as shown in Figure 3 (Fed. Cir. JA557 atreference number 31).

Fuiisaki et al. Figure 1 (Fed. Cir. JA555)

Axiallyaligned, largecylindricalelectrodepairs (21, 22)separated bysmall spacer24. Fujisaki

During the reexamination proceedings,Respondent distinguished Fujisaki et al. byexplaining that the claims were patentable overFujisaki et al. because (i) Fujisaki et al. wascompletely silent regarding EMG signals; (ii) one of

13

ordinary skill in the art would not understandFujisaki et al.'s large-cylindrical electrodes withsmall spacing to have the capability of removingEMG signals; and (iii) testing showed that Fujisakiet al.'s electrode configuration did not substantiallyremove EMG signals (Fed. Cir. JA185-186, Fed. Cir.JA305-337). As Respondent pointed out, Fujisaki etal. "does not even mention EMG," much less describeremoving EMG signals as claimed, and thereforeRespondent's claims were not anticipated or obviousin view of Fujisaki et al. (Fed. Cir. JA197).

Dr. Lekhtman recognized that EMG removal isdependent on electrode size, spacing, width,material, and geometry (Fed. Cir. JA233 at ~41, Fed.Cir. JA239 at ~69, Fed. Cir. JA201, Fed. Cir. JA238­239 at ~68(c». Dr. Lekhtman explained in hisreexamination declaration that "the strength(amplitude or magnitude) of an EMG measurementis proportional to the space between the active andground eleetrodes and the size of the eleetrodes"(Fed. Cir. JA233 at ~41, Fed. Cir. JA239 at ~69, Fed.Cir. JA238-39 at ~68(c». As Dro Lekhtman furtherexplained, Fujisaki et al.'s large-cylindricalelectrodes with small spacing have "the doublydetrimental effeets of (a) magnifying the strength ofthe deteeted EMG relative to the deteeted ECG, thusreducing the ECG/EMG signal to noise ratio and(b) increasing the inequality and time dependentvariance between left and right hand EMG" (Fed.Cir. JA233-34 at ~43). Dr. Lekhtman also explainedthat a person of ordinary skill in the art wouldconclude that Fujisaki et al. was using largeelectrodes to increase the ECG signal amplitude, asopposed to removing EMG signals (Fed. Cir. JA241at ~77).

14

During the reexamination, Respondent furtherprovided testing showing that Fujisaki et al.'seleetrode configuration did not remove EMG signalsduring exercise. Dr. Galiana described standardeleetrical testing that merely requires takingmeasurements during exercise conditions at thedifferential amplifier inputs and output to determinewhether a device has an eleetrode configuration anddifferential amplifier that can substantially removeEMG signals (Fed. Cir. JA1050 at ~54, Fed. Cir.JA210). As Respondent explained during thereexamination proceeding, an "oscilloscope wasconnected to both the inputs and the output of adifferential amplifier" (Fed. Cir. JA210, Fed. Cir.JA253 at ~127). No novel test equipment is required,as the testing can be condueted with a standardoscilloscope or eleetrical meter (Fed. Cir. JA210, Fed.Cir. JA1050 at ~54, Fed. Cir. JA248 at ~110, Fed.Cir. JA253 at ~127). Oscilloscopes are standardequipment that have been in existence since wellbefore the 1980's and can be used to view electricalsignal wave forms and to determine electrical signalcharacteristics such as signal amplitude and signalfrequency. For ease of understanding, a testingarrangement is shown below with reference toFigure 2 of Respondent's '753 Patent.

15

Oscilloscope and '753 PatentFigure 2 (Fed. Cir. JAII09)

First Live Electrode Input

Second Live Eiectrode

IJ

Petitioner incorrectly shows pietures of variouselectrode configurations and alleges that "it is notreadily apparent why" two electrode configurationsare covered by the claim and why two are not(Petition for Writ of Certiorari (hereinafter "Pet.") at9). But Dr. Lekhtman recognized that EMG removalis dependent on electrode size, spacing, width,material, and geometry (Fed. Cir. JA233 at ~41,

JA239 at ~69, JA201, JA238-39 at ~68(c», as weIl asthe circuitry. The first produet shown, the patentedproduct, works as claimed. The E-factor book shownby Petitioner had different circuitry so the fact thatit has four eleetrodes did not place it within theclaim scope (Fed. Cir. JA228-229 at ~19-21, Fed. Cir.JA305-337). The third product, Dr. Galiana's testeddevice, was shown to work as claimed with the basicoscilloscope testing; but, the fourth produet, wasshown not to substantially remove EMG signalswhile exercising with the same type of testing (Fed.Cir. JA305-337). Each configuration is different asthe electrode configurations, spacing, length,thickness, width, etc., are different.

16

Figure from Page 9 ofPetitioner's Brief with Annotations

YES

NO

YES

o

~Galiana

\.lekhtman"E" Factor(prior art)

Fuiisaki)rior,rtJ

ExemplaryPatentedConfiguration

E-Factor RadDifferentCircuitry thatDid Not RemoveEMG Signals

Dr. Galiana'sTested Device,Removes EMG

Fujisaki issilent regardingremoving EMGand Testing ofConfigurationShowed Failureto SubstantiallyRemove EMGDuring Exercise

;=======~\khtman'753

Thus, during reexamination by the USPTO,Respondent submitted evidence that one skilled inthe art could determine through routine testing the"spaced relationship" of the electrodes that resultedin the substantial removal of EMG signals. BiosigInstruments, Inc., 715 F.3d at 900. This evidenceincluded statements by the inventor that the designvariables to substantially remove the EMG signals

17

involved the spacing, size, shape, and materials ofthe electrodes. Id. at 900. Using basic electronicequipment-an oscilloscope-Respondent showedthat one of ordinary skill in the art would be able tomeasure whether the electrodes were in such a"spaced relationship" that would provide therequisite substantially-eliminated EMG signalswhen the device was in use. Id. at 900. The USPTOagreed and confirmed Respondent's '753 Patentclaims to be patentable without amendment.Importantly, Petitioner has never stated that itcannot reproduce the basic oscilloscope/meter teststo determine what is inside or outside the claimscope.

C. THE CLAIMS HAVE NOT UNDERGONE"METAMORPHOSES"

In order to manufacture an indefiniteness issuewhere none really exists, Petitioner incorrectlyasserts that the '753 Patent claims "have undergonemultiple metamorphoses" (Pet. at 9). Petitioner isincorrect. Throughout the '753 Patent itself, theoriginal prosecution, the reexamination proceedings,the district court proceedings, and the appeal,Respondent has consistently maintained thatRespondent's claimed invention includes, inter alia,a live and a common (e.g., ground) electrode for eachhand that are in a "spaced relationship" andconnected to a differential amplifier, such that theelectrodes can detect hand EMG signals and theheart's ECG signals, and the differential amplifiercan substantially remove the hand EMG signals,leaving ECG signals to be processed for accurateheart rate determination (Fed. Cir. JA14 at 5:17­6:15, JA12 at 1:34-41).

18

Patent: Petitioner incorrectly asserts that the'753 Patent does not define "spaced relationship" andprovides "no guidance" on the claimed spacedrelationship. The '753 Patent describes that theelectrodes are arranged or spaeed such that in usethe EMG signals received by a live and commonelectrode pair "will be of substantially equalmagnitude and phase" to those received by the otherlive and common pair (Fed. Cir. JA13 at 3:39-43).The '753 Patent also explains that the electrodes arearranged or spaced such that the ECG signalsreceived by the one live and common electrode pairare of opposite phase to those received by the otherlive and common electrode pair (Fed. Cir. JA13 at3:44-50). As the '753 Patent explains, thisarrangement or spacing permits the detection ofsignals such that when inputted into the differentialamplifier (Fed. Cir. JA13 at 3:47-50), the heart ECG"signals will be added" and the unwanted "EMG"signals "will be cancelled" (Fed. Cir. JA13 at 42-43).The original patent claims expressly stated thisrelationship in the claims themselves (Fed. Cir. JA5at 5:42-6:7). Although Petitioner contends that thereis "no test" in the '753 Patent itself, patents are notrequired to recite elementary electrical testing suchas using an oscilloseope to examine eleetrieal signals.Tellingly, Petitioner has never onee provided anyevidenee that a person of ordinary skill in the artwould not understand that an oseilloseope/meter eanbe applied to determine the electrical signals atvarious points in an electrical circuit.

Original Prosecution: Petitioner ignores thatin the original prosecution, the patentee explained,consistent with the specification, that its inventionincluded having electrodes spaced to detect EMG

19

signals for removal by a differential amplifier andarnplifying the ECG signals (Fed. Cir. JAS3, Fed.Cir. JA85).

Reexaminations: The reexaminationproceedings are consistent with the Patent and theoriginal prosecution. Petitioner improperly selectsone quote from Dr. Lekhtman's reexaminationdeclaration while ignoring the main arguments andreasons for why the USPTO agreed that the claimswere patentable over Fujisaki et al. Petitionerignores that Respondent explained the claims werepatentable over Fujisaki et al. because (i) Fujisaki etal. was completely silent regarding EMG signals;(ii) one of ordinary skill in the art would notunderstand Fujisaki et al.'s large-cylindricalelectrodes with small spacing to have the capabilityof removing EMG signals; and (iii) testing showedthat Fujisaki et al.'s electrode configuration did notsubstantially remove EMG signals (Fed. Cir. JA185­86, Fed. Cir. JA305-337). As Respondent pointed out,Fujisaki et al. "does not even mention EMG," muchless detecting and removing EMG signals asclaimed, and therefore, Respondent's claims were notanticipated or obvious in view of Fujisaki et al. (Fed.Cir. JA197). In fact, Respondent tested variouselectrode configurations. These tests showed usingstandard electrical testing with an oscilloscope ormeter which of the electrode configurations satisfiedthe claims and which did not (Fed, Cir. JA202-214,Fed. Cir. JA255 ~133, Fed. Cir. JA305-337).Petitioner has never disputed that these tests can beapplied to determine what is inside or outside of theclaims. Ultimately, the Patent Office agreed thatFujisaki et al. lacked the capability to substantiallyremove EMG signals as claimed, and in June 2010

IJ

20

issued a notice of intent to issue a reexaminationcertificate (Fed. Cir. JA140-144). In the reasons forallowance, the Examiner stated that the "crucialclaim language" was that the prior art did notdisclose electrodes configured with a differentialamplifier for detecting and substantially removingEMG signals (Fed. Cir. JA142).

Distriet Court Proceedings: Consistent withthe Patent, the original prosecution history, and thereexamination proceedings, Respondent asserted thesame claim scope during claim construction.Petitioner, however, misrepresents the claimconstruction proceedings. During claim construction,Petitioner having lost the reexaminationproceedings, sought to read in an electrodespacing/width limitation into the claims tomanufacture a noninfringement argument (Fed. Cir.JA1378:23-1379:15, Fed. Cir. JA1382:14-1391:23).The crux of Petitioner's argument was there was alegal disavowal of certain electrode spacing/widthstructures during the reexamination proceedings(Fed. Cir. JA1378:23-1379:15, Fed. Cir. JA1382:14­1391:23). The District Court properly rejected thisargument because there could not possibly have beensuch a disavowal during the reexaminationproceedings because Biosig expressly stated duringthe prosecution history that some electrodeconfigurations having a spacing that is less than theelectrode width do substantially remove EMGsignals as claimed, such as Dr. Galiana's device, andsome of Petitioner's and Star-Trec's devices (Fed.Cir. JA246 at ~~101, 102, Fed. Cir. JA328-31, Fed.Cir. JA248-55, Fed. Cir. JA1049). Further, theReasons for Allowance explain that the claims werepatentable because Fujisaki et al. did not disclose

21

the detection and removal of EMG signals as claimed(Fed. Cir. JA140-44). Respondent's arguments fellright in line with the '753 Patent, the originalprosecution, and the reexamination proceedings.Tellingly, Petitioner did not even raise indefinitenessat the claims construction proceedings.

Petitioner alleges that the District Court foundthat Respondent's "submissions to the PatentOffice were internally inconsistent and 'gibberish' "(Pet. at 12, citing Fed. Cir. JA1389). However,Petitioner incorrectly cites the oral argumentbanter and such back and forth of oral argumentdoes not constitute a factual finding by the Court.Moreover, at oral argument, the District Courtrequested further submissions (Fed. Cir. JA1391 at24:21-6) and then after reviewing that furthersubmission (Fed. Cir. JA1315-1321) construed theclaim in accordance with Respondent's position.(Fed. Cir. JA1362-1367).

Federal Circuit Decision: The Federal Circuitmajority agreed with Respondent's position, which ithad consistently advanced, finding the claims notindefinite because a person of skill in the art couldapply the oscilloscope/meter testing to determinewhat was within the claim scope. BiosigInstruments, Inc., 715 F.3d at 903. The FederalCircuit majority expressly held that "it has beenshown that skilled artisans can readily ascertain thebounds of the 'spaced relationship' through testsusing standard equipment." Id. The Federal Circuitfurther held that "with this test, configurations couldhave been determined by analyzing the differentialamplifier input and output signals for detectingEMG and ECG signals and observing the substantialremoval of EMG signals from ECG signals while

22

simulating exercise. These parameters constitutethe metes and bounds of 'spaced relationship.'" Id at901.

Federal Circuit Concurring Opinion: TheFederal Circuit's concurring opinion expressed thesame decision in slightly different terms. As theconcurrence explains, the "court's construetionprovided sufficient clarity to one of skill in the art asto the metes and bounds of the 'spaced relationship'limitation." Id at 905. The concurring opinion did notlink the funetional language in the claim to the"spaced relationship" term because it believed thatissue was not before the Federal Circuit. Id at 906.Further, Petitioner incorrectly suggests that theFederal Court found that the funetional languageregarding detecting and removing EMG signals wasnot a claim limitation, and that the claim wouldhave a different scope under its analysis.

In summary, contrary to Petitioner's argument,Respondent has been unwavering for over twentyyears regarding the meaning of its claims and hasnot urged different constructions. Rather, theDistriet Court was simply led astray by Petitioner'sunfounded attorney assertion that a person of skillin the art did not understand the claim scope.

REASONS FOR DENYING THE PETITION

Petitioner's arguments for granting the Petitionshould be denied because this Court has recentlyconsidered the same issues and denied the petitionin that instance after soliciting the views of theUSPTO. Further, there is no confliet between thisCourt and the Federal Circuit on the indefinitenessissue warranting granting the Petition. Moreover,Petitioner urges that this Court overturn well-

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established law in favor of a "multiple reasonableinterpretation" standard that has no legal basisand which would significantly harm the patentsystem.

I. PETITIONER FAlLS TO PROVIDE ABASIS FOR GRANTING ITS PETITION

A. PETITIONER'S ARGUMENTS FAlLBECAUSETHffiCOURTRECENTLYDENIED A PETITION FORCERTIORARI AFTER FULLYCONSIDERING THE VERY SAMEARGUMENTS

Petitioner is merely rehashing the argumentsmade in Applera Corp. v. Enzo Biochem, Inc.131 S. Ct. 3020 (2011). In Applera, this Courtissued an order soliciting the views of the DSPTOon the very issues that Petitioner raises here.Applera Corp. v. Enzo Biochem, Inc., 131 S. Ct. 847(2010). After the USPTO submitted an amicuscuriae brief opining that "this Court's review is notwarranted" (Brief for the United States asAmicus Curiae, Applera, No. 10-426 (May 17, 2011)(hereinafter "Applera D.S. Amicus Brief') at 6), thisCourt denied the petition for certiorari inApplera. 113 S. Ct. 3020. Petitioner identifiesnothing that has changed since Applera. Thus, thisCourt has fully considered Petitioner's argumentsand has concluded this Court's review is notwarranted.

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B. PETITIONER FAlLS TO SHOW THATTHE FEDERAL CIRCUIT'S VIEW ISINCOMPATIBLE WITH THISCOURT'S INTERPRETATION

As it cannot, Petitioner provides no basis for whythe indefiniteness standard applied by the FederalCircuit conflicts with this Court's precedent. Rather,on pages 15-16 of its Petition, Petitioner merely citesgenerallanguage requiring claims to be definite andthen asserts, without citation, that the properindefiniteness standard is that if a claim "is open tomultiple reasonable interpretations[,]" the claim isindefinite (Pet. at 15). As indicated by the lack ofcitation, Petitioner's "multiple reasonableinterpretations" standard is not found in this Court'sprecedent. Thus, Petitioner's argument fails becauseit attempts to manufacture a conflict between thisCourt and the Federal Circuit by attributing astandard to this Court that it cannot even show thisCourt has adopted. Moreover, Petitioner's argumenthas no merit because this Court fully considered thisvery same argument in denying Applera Corp.'spetition for certiorari in view of the USPTO's amicusbrief in that case explaining that this Court's andthe Federal Circuit's standards are the same. ReplyBrief of Petitioner Applera Corp., Applera No. 10-426(November 22, 2011) at 2-4; Applera D.S. AmicusBrief at 6, 11-16; Initial Brief of Respondent EnzoBiochem, Inc., Applera, No. 10-426 (November 11,2010) at 6-8.

Petitioner's argument further fails becausePetitioner ignores that the Federal Circuit'sstandards actually comport, rather than conflict,with this Court's indefiniteness standards.Petitioner incorrectly asserts that the Federal

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Circuit has applied an "any reasonable meaning" or"insolubly ambiguous" indefiniteness standard thatis inconsistent with this Court's precedent (Pet. at17). There is no conflict. For example, in MineralsSeparation, Ltd. v. Hytle, this Court explained that"the certainty which the law requires in patents isnot greater than is reasonable, having regard to theirsubject matter." 242 D.S. 261, 270 (1916) (emphasisadded). This Court has held patent claims definitebecause they were "sufficiently definite to guidethose skilled in the art to" their "successfulapplication." Id. at 271. Likewise, in Eibel ProcessCo. v. Minnesota & Ontario Paper Co. this Courtheld that claims need not be subject to nointerpretation as Petitioner suggests. 261 D.S. 45 at65-67 (1923). Rather, this Court held that claimswere not indefinite because the "evidence disclosesthat one, so skilled" in the art "had no difficulty" indetermining the bounds of the claim and terms ofdegree such as "substantial." Id. at 65-66.

The indefiniteness standard applied by theFederal Circuit is no different, as exemplified in thiscase. As the Federal Circuit explained in this case, aclaim is "insolubly ambiguous" or "not amenable toconstruction" if "reasonable efforts at claimconstruction result in adefinition that does notprovide sufficient particularity and clarity to informskilled artisans of the bounds of the claim." BiosigInstruments, Inc., 715 F.3d 891, 898. The FederalCircuit further explained that indefiniteness"require[s] a showing that a person of ordinary skillwould find" the claim term "insolubly ambiguous­that it fails to provide sufficient clarity delineatingthe bounds of the claim to one skilled in the art." Id.at 899. Tellingly, Petitioner fails to provide any

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explanation of how the Federal Circuit and thisCourt supposedly have different standards. Rather,Petitioner plucks language from opinions and merelyalleges that the standards differ.

Moreover, Petitioner's argument flies straight inthe face of this Court's recognition that constructionof a patent claim is a basic issue in any patent case.This Court has also recognized that even a "simplepatent case" involves the "element" of "construingthe patent." Markman, 517 D.S at 384. This Courthas explained that "the nature of language makes itimpossible to capture the essence of a thing in apatent application." Festo Corp. v. Shoketsu KinzokuKogyo Kabushiki Co., 535 D.S. 722, 731 (2002).Accordingly, the Court held that the construction ofa patent claim is a question of law for the court andthere are defined procedures for a Court to construea claim. Markman, 517 D.S 370. Petitioner'sproposed "multiple reasonable interpretation"standard cannot be reconciled with this Court'sprecedent because there would essentially be noneed for a claim construction under Petitioner'sstandard since a defendant could always assert a"reasonable interpretation" argument. Further, thisCourt has explained that a patent's "value would begreatly diminished," if it was limited to preciseliteral terms. Festo Corp., 535 D.S. at 731.

c. THE FEDERAL CIRCUIT HAS NOTMISINTERPRETED THE PATENTSTATUTE

Petitioner asserts that the Federal Circuit hasmisinterpreted the indefiniteness standard of"particularly pointing out and distinctly claiming"(Pet. at 14). Petitioner is wrong because the Federal

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Circuit's explanation of the indefiniteness standardhas to be understood in the context of construing aclaim. A patent is a legal document with claims thatdefine legal rights. Markman, 517 D.S. at 388. Asexplained above, this Court has recognized thatclaim construetion is part of even a simple patentcase because it is not an easy task to reduce aninvention to words. Id at 384. In the adversarialcontext of patent litigation, it is therefore necessaryto construe the claim to define the legal right.

In this context of construing a claim, the FederalCircuit has properly explained that theindefiniteness provision of 35 D.S.C. § 112, ~2

requires the "scope of the claims be sufficientlydefinite to inform the public of the bounds of theproteeted invention, i.e., what subjeet matter iscovered by the exclusive rights of the invention."Biosig Instruments, Inc., 715 F.3d at 897-898.(quoting Halliburton Energy Serus., Inc. u. M-I LLC,514 F.3d 1244, 1249 (Fed. Cir. 2008». The FederalCircuit further explained that a claim is indefinite "ifreasonable efforts at claim construction result in adefinition that does not provide sufficientparticularity and clarity to inform skilled artisans ofthe bounds of the claim," which the Federal Circuitterms "insolubly ambiguous." Id. at 898. (quotingStar Sei., Inc. U. R.J. Reynolds Tobacco Co., 537 F3.d1357, 1371 (Fed. Cir. 2008». The Federal Circuitalso explained that because "some experimentationmay be necessary to determine the scope of theclaims does not render the claims indefinite." Id. at902. (quoting Exxon Research & Eng'g CO. U. UnitedStates, 265 F.3d. 1371, 1379 (Fed. Cir. 2001». Thus,the Federal Circuit's standard properly reflects thata claim is not indefinite merely because a defendant

2[3

can advocate a rsasonable argument. Notably, theUSPTO expressly rejected Petitioner's argurrient inApplera. See Applera D.S. Amicus Brief at 11-16.Similarly, in other legal contexts, astatute or acontract must be construed, but they are notconsidered indefinite merely because a motivateddefendant ean assert a reasonable eonflictingargument.

Petitioner asserts that if testing is required tounderstand how to apply a clairn then "it is not toomueh to ask that the inventor deseribe those tests"(Pet. at 15). But here the inventor dic1 just that asthe oscilloseope/meter testing is described in theintrinsie record, anel Petitioner has neuer asserteelthat it eloes not understand the tests or cannot applythe tests, much less provided any evidence thatpersons of skill in the art would have any trouble inreproelueing the tests. In contrast, Responelent hassubmitted substantial evidence that the claims aredefinite.

D. THE FEDERAL CIRCUIT HAS NOTIMPROPERLY ALLO\'VED VAGUECLAIMS TO BE CURED THROUGHCLAIM CONSTRUCTION

Petitioner ineorreet1y asserts that the Federa1Cireuit has improperly "cured'' vague claims byconstruing thern and that claims must be elefineelbefore litigation. Basieally, Petitioner is rehashingits other arguments that mere1y if a defenelantaelvanees a "reasonab1e" claim eonstructionargument that eonflicts with the patentee'sargument, the claim is indefinite anel the Federa1Cireuit has "eured" the claim by eonstruing it. Thus,

-

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Petitioner's argument fails for the same reasons asits other arguments.

In its argument, Petitioner incorrectly criticizesthe Federal Circuit for construing a claim based onthe understanding of a person of ordinary skill in theart, as opposed to a lay person. This argument iswithout merit. A patent is directed to a person of"ordinary skill in the art." 35 V.S.C. § 112, ~l. Thus,to construe a patent claim from a lay person'sperspective, as Petitioner advocates, is contrary tothe patent statute.

E. PETITIONER'S DATED CASE FROMTHE SECOND CIRCUIT PROVIDESNO BASIS FOR GRANTING ITSPETITION

Petitioner incorrectly asserts that a 1971 case,Norton Co. v. Bendix, from the Second Circuitjustifies its petition (Pet. at 20-21). Petitioner'sargument has no merit because Norton is inaccordance with both this Court and the FederalCircuit's indefiniteness standard. In Norton, theinventors and multiple expert witnesses onplaintiffs behalf all testified that they did not have astandard for defining what "closely spaced" and"substantial distance" meant, and expressedconflicting views regarding how to define whether anaccused device met the limitations. Norton Co. v.Bendix Corp., 449 F.2d 553, 555-557 (2d Cir. 1971).Further, there was no standard in the intrinsicrecord for determining what was inside or outside ofthe claims, and the Court had to consider conflictingexpert testimony. Id. at 555. Thus, there is nothingunique about Norton that merits this Court'sattention.

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Petitioner mistakenly tries to draw a parallelbetween Norton and this case because although thetechnologies differ, the claim terms have somesimilar words. However, this case is not akin toNorton because here the intrinsic record providesroutine oscilloscope analysis for determiningwhether the claims are satisfied and the onlytestimony from persons of skill in the art is that theclaims are definite (Fed. Cir. JA210, Fed. Cir.JA1050 at ~~54-55, Fed. Cir. JA248 at ~110, Fed.Cir. JA253 at ~127, ~129). Petitioner has nevercontended to any Court that it does not understandthe oscilloscope test or that it cannot apply the test,much less provide any evidence from a person ofordinary skill in the art.

H. THE FEDERAL CIRCUIT DID NOTCOMMIT LEGAL ERROR BY GIVINGRESPECT TO THE PRESUMPTION OFVALIDITY IN CRAFTING ITSINDEFINITENESS TEST

Petitioner's argument that the Federal Circuitincorrectly considers the presumption of validity setforth in 35 D.S.C. § 282 in assessing indefiniteness ismeritless (Pet. at 18-19). Dnder 35 D.S.C. § 282 apatent is presumed by law to be valid. Indefinitenessis an invalidity defense set forth in 35 D.S.C. §112,~l. Accordingly, patent claims are presumeddefinite, and the Federal Circuit has properlyfollowed Congress' statutory framework. Moreover,this Court recently upheld the traditional view thatthe presumption of validity applies to invaliditydefenses. Microsoft Corp. V. i4i Ltd. Partnership,131 S. Ct. 2238 (2011).

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In arguing that the statutory presumption ofvalidity does not apply to the invalidity defense ofindefiniteness, Petitioner misapplies this Court'sholding in Microsoft Corp. In Microsoft, this Courtheld that the statutory presumption of invalidityapplies to validity defenses. 131 S. Ct. at 2252. Asthe VSPTO explained, in its amicus brief in Applera,because there is a statutory presumption of validity,the Federal Circuit properly requires "challengers toovercome the presumption by offering ademonstration of indefiniteness, including a showingthat reasonable efforts at claim construction areunavailing." Applera D.S. Amicus Brief at 18, citingExxon, 265 F.3d at 1375.

Petitioner's citations to the concurrence opinionin Microsoft have no merit. The concurrence merelypointed out that the presumption of validity appliesto underlying factual issues. See Microsoft, 131 S. CLat 2253. This Court has recognized that claimconstruction includes underlying factual issues. SeeMarkman, 517 D.S. at 389 (recognizing that claimconstruction may involve credibility judgments);Minerals Separation, 242 V.S. at 270-271(considering testing of different materials inassessing whether claims were sufficiently definite).In fact, this Court has considered factual evidence inUnited Carbon in resolving an indefinitenesschallenge. United Carbon Co. v. Binney & Smith Co.,317 D.S. 228, 233-234 (1942). Thus, from theconcurring opinions perspective, the presumption ofvalidity applies to these underlying factual issuesthat must be considered in answering theindefiniteness issue.

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III.THIS CASE IS NOT AN IDEAL VEHICLEFOR CONSIDERING INDEFINITENESS

This case is not an ideal vehicle for consideringthe indefiniteness standard because the re cord islopsided in Respondent's favor, and it is undisputedthat the oscilloscope/meter testing is a bright linetest for determining what is inside and outside ofthe claims. Respondent provided evidence from theprosecution history where the inventor,Dr. Lekhtman, and an expert, Dr. Galiana,provided test results showing the standard fordetermining whether electrodes have the claimed"spaced relationship" such that the EMG signalscan be substantially removed by the differenceamplifier (Fed. Cir. JA210; Fed. Cir. JAI050 at~54, Fed. Cir. JA248 at ~llO; Fed. Cir. JA253 at~127, Fed. Cir. JA305-337). Respondent alsopresented another expert, Dr. Yanulis, whotestified that a person of ordinary skill in the artcan test for the substantial removal of EMG signalswhich determines whether electrodes have thespaced relationship required by the claims (Fed.Cir. JA1670). All of these witnesses testified that aperson of ordinary skill in the art can perform thistest simply by using an oscilloscope and measuringwhether the EMG signals are substantiallyremoved. In contrast, Petitioner did not submit anytesting, expert or fact declaration, affidavit,testimony or other evidence from a person of skillin the art that suggested the '753 Patent claimswere indefinite. Petitioner merely providedattorney assertion that the term "spacedrelationship" was indefinite in the abstract. If thatis all that is needed to establish indefiniteness,then patents are of limited value. Now, Petitioner

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requests that this Court rewrite the indefinitenessstandard so that attorney assertion can prevailover factual evidence.

Petitioner's argument that this case is a moreideal case than Applera is incorrect. First,Petitioner mischaracterizes the DSPTO's amicusbrief in Applera as suggesting that this Court didnot grant the petition in Applera primarily becausethe "insolubly ambiguous" language was not usedin the Federal Circuit's opinion in that case (Pet. at23). But, as explained above, the DSPTO disagreedwith Petitioner's primary arguments advancedhere. See Applera D.S. Amicus Brief. Secondly,Petitioner incorrect1y suggests that the test is notin the intrinsic record, when in fact it is in theintrinsic record (Fed. Cir. JA12 at 2:12-19, Fed Cir.JA13 at 3:26-31, Fed. Cir. JA14 at 5:42-61, Fed.Cir. JA139-146, Fed. Cir. JA210, Fed. Cir. JA1050at ~~54-55, Fed. Cir. JA248 at ~110; Fed. Cir.JA253 at ~127). Moreover, Petitioner incorrectlyasserts that there is "not arecord in existencewithin a decade of the patent's issuance," when, infact, oscilloscope/meter testing is basic electricaltesting that can be performed by a college studentin an engineering field or possibly even a highschool student. A patent has never been required todetail matters known to those skilled in the artsuch as using a standard oscilloscope to measureelectrical signals. Finally, Petitioner misstates thereexamination record. Petitioner completelyignores the testing record and the Reasons forAllowance during prosecution, and insteadselectively mischaracterizes one statement in theprosecution record where Dr. Lekhtman isdescribing the Fujisaki et al. electrode

$ N ~. "§"" § i,_,!'23!SfJEB

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configuration (Pet. at 25). Petitioner cannot justifythis Court granting its Petition by basicallyignoring the record and the bright-line test fordetermining what is inside and outside of theclaims.

IV.TRERE IS NO ERROR REGARDINGINDEFINITENESS TRAT RASDAMAGED OUR PATENT SYSTEM

Petitioner and amicus contend that theindefiniteness standard has weakened our patentsystem. However, their briefs are contradictory. Forexample, amicus Electronic Frontier Foundationargues on the one hand that the indefinitenessstandard has "caused widespread, well known harm"(Brief of Public Knowledge and the ElectronicFrontier Foundation as Amici Curiae for thePetitioner, Nautilus, Inc. v. Biosig Instruments, Inc.,No. 13-369 (2013) (hereinafter "EFF Brief') at 9), buton the other hand that indefiniteness arises in a"minuscule pool of cases" (EFF Brief at 12). If suchharm was being created from the indefinitenessstandard, as Petitioner and Amici contend, thensurely motivated litigants in heavily litigated patentcases would be advancing these issues, not justraising them in a "minuscule" amount of cases.

What Petitioner and amicus really advocate for isnot strengthening the patent system, but rathergutting the patent system. Under their "multiplereasonable interpretations" standard, it would seemthat a motivated defendant need only pay anattorney to provide multiple reasonableinterpretations to render a claim indefinite. Thisstandard is not realistic and would be harmful toinnovation. Because a patent is a legal document

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setting forth an invention into words to define alegal right, construing a patent is inherent to itsnature, just as it is with other legal documents, suchas astatute or a contraet.

CONCLUSION

Petitioner has not shown any compelling reasonsfor this Court to grant the Petition. Therefore,Respondent respeetfully requests that the Petitionbe denied.

Respectfully submitted,

/s/ Michael J. BonellaMichael J. BonellaCounsel of RecordDaniel C. MulvenyJenna M. PellecchiaTod A. KupstasKESSLER TOPAZ MELTZER

& CHECKLLP280 King of Prussia RoadRadnor, PA 19087(610) 667-7706

Counsel for RespondentNovember 22, 2013