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Judge Hellerstein Holds That “Arranged On” Means “Connected In Some Fashion”

On September 30, 2016, District Judge Alvin Hellerstein (S.D.N.Y.) denied defendant Nautilus, Inc.’s (“Nautilus”) motion for summary judgment of non-infringement holding that “disposed on said elongated member” does not necessarily mean directly on that member.

Plaintiff Biosig Instruments, Inc. (“Biosig”) sued Nautilus for infringement of U.S. Patent No. 5,337,753 (“the ‘753 patent”), which is directed to an exercise machine such as a stationary bicycle having a cylindrical “sensor” bar and “a display arranged on the cylindrical bar for showing the user’s heart rate.”

Some of the accused products  have a display located near the sensor bar, but not attached to it, while other accused products have a sensor bar that is located elsewhere on the machines.  Biosig contended that Nautilus’s products infringe its patent literally or under the doctrine of equivalents.

Nautilus argued that its products are not covered by the claim as construed under literal infringement because the display is “off” the sensor bar rather than “arranged on” the sensor bar as required by the claim.

The Court found that Nautilus’s argument narrows the claim construction and criticized Nautilus’s reliance on embodiments showing the display being integrated into the sensor bar.  The Court was unconvinced that the specification limited the claims and held that a jury could find that a display is sufficiently “arranged on” the sensor bar when it is “mounted onto the bar or connected to the bar in some fashion.”

In its analysis of the doctrine of equivalents argument, the Court first noted that the proper question is “whether an asserted equivalent represents an ‘insubstantial difference’ from the claimed element or ‘whether the substitute element matches the function, way, and result of the claimed element.’”

Nautilus argued that a display “off” the bar cannot be equated with an element requiring a display to be “arranged on” the bar because they are “opposing, antithetical concepts.”  The Court, however, found that a display indirectly connected to the sensor bar is not the opposite and “antithesis” of a display “arranged on” the bar.  Nautilus also argued that the patentee dedicated to the public the limitation of a display being “off” the bar because the patent disclosed that embodiment but did not claim it. ‘The Court disagreed, holding that the patentee must have identified the unclaimed limitation as “an alternative to a claim limitation” in order to relinquish it to the public.

Case: Biosig Instruments, Inc. v. Nautilus, Inc., No. 1:10-cv-07722-AKH (S.D.N.Y. Sept. 30, 2016).