By Stephen B. Schott
On Tuesday, the Supreme Court issued two patent-related opinions.
Inducement—Direct Infringer Needed (Limelight Networks v. Akamai Tech.)
The law at issue in this case revolves around induced infringement. In layman’s terms, induced infringement arises when one actor does not itself perform all of the steps in a claim. Consider an example where a patent claim requires 39 steps. An accused infringer performs 38 steps but another party performs the 39th. Can the patent owner sue the accused infringer for infringement? What if the accused infringer told the third party how to perform the 39th step? This example illustrates the induced infringement issue.
Turning to the Limelight case, the Federal Circuit held that Limelight did not perform all of the patent’s steps because its users performed some of them, and these users “did not act as agents of, or under the direction or control of, Limelight.”
The Supreme Court overturned this holding, leaving the Federal Circuit a Cubs-like 0-45 for Justices supporting its decisions this term. Like a parent who had a bad day at the office, it took the Federal Circuit to the woodshed for several errors not actually present in the Federal Circuit’s decision.
If [,as the Federal Circuit holds,] a defendant can be held liable under §271(b) for inducing conduct that does not constitute infringement, then how can a court assess when a patent holder’s rights have been invaded?
As Jason Rantanen put it over at Patently-O, the Supreme Court handled this criticism “clumsily” because the Federal Circuit made no such holding.
Setting this squabble aside, the Supreme Court remanded the case with the guidance that “there [can be] no infringement of the method in which respondents have staked out an interest, because the performance of all the patent’s steps is not attributable to any one person.”
Whether an accused infringer “provid[ing] instructions and offer[ing] technical assistance” to its customers regarding how to perform a claim step is infringement under this standard is a decision that the Federal Circuit will have to make on remand, but it seems unlikely.
Claim Indefiniteness Requires Reasonable Uncertainty (Nautilus v. BioSig)
The Patent Act requires that a patent specification “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as [the] invention.” Setting aside a painful that vs. which error in the statute, a claim that fails to meet the statute is unpatentable in an application or invalid in a patent.
The Federal Circuit standard until yesterday was that a claim was not indefinite unless it was “insolubly ambiguous” and not “amenable to construction,” or interpretation by a court. The Supreme Court rejected this standard and inserted in its place a new indefiniteness test.
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.
This “reasonable certainty” standard is a new test and it will take a chain of cases to flesh out what it means and how it differs from the old “insolubly ambiguous” standard. This Nautilusdecision may make it easier to invalidate patent claims but the shift in standard seems more about the language that will now be quoted in future opinions than a change with widespread consequences.
If you have questions, contact me.
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