Supreme Court Wades Into Patent Litigation
By Michael Bonella // June 2, 2014
The Supreme Court waded into patent litigation with two high profile decisions on June 2, 2014, one on indefiniteness and the other on inducement:
Nautilus, Inc. v. Biosig Instruments, Inc.
In Nautilus, Inc. v. Biosig Instruments, Inc., the court struck down the Federal Circuit’s “insolubly ambiguous” test for patent indefiniteness, saying that it was too permissive against weak or unclear patents while also rejecting the standard proposed by Petitioner Nautilus. During prior proceedings in the case, the Southern District of New York originally threw out Biosig’s heart rate monitor patent on the grounds that a key term, “spaced relationship,” was ambiguous. But on appeal the Federal Circuit reversed, noting that under prevailing circuit law a patent is only invalid for indefiniteness if it is “insolubly ambiguous,” or not amenable to any reasonable construction.
The Supreme Court ultimately found that this standard would allow patents that did not provide inventors with skill in the art with a reasonable level of certainty regarding the zone of innovation which the patent claimed, although it did not make any decision on the validity of the patent-in-suit and remanded the case for further proceedings under the new standard. Interestingly, though, it appears that the standard which the Supreme Court ultimately produced was much more similar to that advocated by Plaintiff Biosig than by defendant Nautilus. While Nautilus had requested that a patent be considered invalid whenever readers could reasonably interpret the terms differently, Biosig and the Solicitor General had said that the Court should require only that the patent provide reasonable notice of the scope of the claimed invention. Ultimately, the justices decided that, “A patent is invalid for indefiniteness if its claims, read in light of the patent’s specification and prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”
Limelight Networks, Inc. v. Akamai Technologies, Inc.
In Limelight Networks, Inc. v. Akamai Technologies, Inc., the Court ruled that to be liable for inducing infringement under 35 U.S.C. § 271(b) there must be an act of direct infringement. The original Plaintiff, Akamai, was the exclusive licensee for a method patent for internet traffic through Content Delivery Networks (CDN), the networks of third party servers that allow websites to more swiftly and efficiently provide content to internet users. Defendant Limelight’s systems utilize several of the steps involved in the patent-in-suit, but require customers to complete one step for themselves while simultaneously providing said customers with information and assistance on how to carry out that step. Therefore, even though there was no direct infringer, the Federal Circuit held en banc that Limelight was liable for inducing infringement.
The Supreme Court overruled that decision today and said that an actor cannot be held to have “induced infringement,” when no direct infringement has occurred in the first place. Writing in particular strong terms, Justice Alito declared that the Federal Circuit, “fundamentally misunderstands what it means to infringe a method patent.”
These cases join a string of unanimous 9-0 setbacks for the Federal Circuit at the hands of the Supreme Court.
* Special thanks to CRK summer clerk, Michael C. Bonella, for his work developing this post