Two important new Supreme Court decisions
The Supreme Court of the USA has recently handed down two important decisions in the field of patent law, one relating to inducement to infringe and the other one relating to indefiniteness of the claims of a patent.
Inducement to infringe
In the case of Limelight Networks, Inc. v. Akamai Technologies, Inc. et al., U.S. No. 12-786, Akamai was the exclusive licensee of a patent that relates to a method of delivering data via a content delivery network. One of the steps of the method involved the “tagging” of the content. Limelight carried out several steps of the method but its customers, rather than Limelight, performed the “tagging” step. Limelight provided tagging instructions but did not exercise control or direction over the tagging activities of its customers.
An en banc panel of the Federal Court (the CAFC) had overturned the decision of the District Court and held that Limelight had induced infringement. The CAFC held that a defendant who performed some steps of a method patent and encouraged others to perform the rest could be liable for inducement to infringe even if no single entity was liable for direct infringement.
The Supreme Court reversed the decision of the CAFC, holding that a defendant is not liable for inducing infringement when no one entity has directly infringed, i.e. that a single entity has committed all the steps of the claimed method. If there has been no direct infringement, there can be no inducement of infringement. The Supreme Court did acknowledge the concern that its decision could permit a would-be infringer to evade liability by dividing performance of a method patent’s steps with another who is not under the control or direction of that would-be infringer. However, the Supreme Court held that the desire to avoid earlier CAFC decisions does not justify fundamentally altering the rules of inducement liability that the US Patent Law requires which could have problematic consequences and result in difficulty for lower courts to apply consistently.
The Supreme Court has remanded the case to the CAFC to revisit the issue of divided direct infringement.
Indefiniteness invalidity
Section 112, 2nd paragraph, of the US Patent Law provided: “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” This provision changed slightly with the introduction of the recent America Invents Act (AIA) which amended the US Patent Law.
To date, the CAFC has interpreted this provision on the basis that, unless a claim was “insolubly ambiguous” to a person skilled in the art and in the light of intrinsic evidence, a claim was not invalid for indefiniteness.
In the case of Nautilus Inc. v. Biosig Instruments, Inc., U. S. No. 13-369, the claims related to a heart rate monitor used with exercise equipment and filtered out interference from electromyogram (EMG) signals arising from muscle activity. To do this, one of the claim features related to a cylindrical bar on which electrodes were arranged “in spaced relationship with each other”.
The District Court had initially held that the term in quotes was invalid for indefiniteness. On appeal the CAFC reversed, holding that the term was “amenable to construction” and not “insolubly ambiguous” finding that the claims “provide inherent parameters sufficient for a skilled artisan to understand the bounds of ‘spaced relationship’” taking into account the claim language, specification and prosecution history.
The Supreme Court has rejected the CAFC’s standard, which tolerates some ambiguous claims but not others, finding that that standard does not satisfy the statute’s definiteness requirement. The Court held that finding that claims were “amenable to construction” or “insolubly ambiguous,” lack the precision the Patent Law demands. The Court further held that to tolerate imprecision just short of that rendering a claim “insolubly ambiguous” would diminish the definiteness requirement’s public-notice function and could lead to a “zone of uncertainty”, discouraging innovation. In other words, the claims, when read in the light of the specification and the prosecution history must inform, with “reasonable certainty”, those skilled in the art about the scope of the invention.
The Supreme Court remanded the case to the CAFC to reconsider, under the proper standard, whether the relevant claims patent in suit were sufficiently definite.