Patent Opinion Day: Supreme Court Twice Reverses Federal Circuit -Brann & Isaacson

02Jun
2014

Two major patent cases were decided today by a unanimous Supreme Court in short, sharp opinions reversing the Federal Circuit Court of Appeals:

In the closely–watched Limelight v. Akamai case, dealing with induced infringement of method claims, the high court reversed the Federal Circuit’s holding that a court could find induced infringement without direct infringement performed or orchestrated by a single actor. The Supreme Court found that this conclusion followed as a matter of course from the Federal Circuit’s own case law on direct infringement. One way of looking at this result is that the Supreme Court hit the reset button, and the Federal Circuit will now be faced with the task of answering the question originally posed it: Under what circumstances can there be direct infringement of a method claim by multiple parties? The Federal Circuit initially avoided that question by finding induced infringement could be based on an act of direct infringement without a direct infringer. The Supreme Court rejected that logic today. This decision marks a (temporary?) victory for accused infringers against whom—unless and until further Federal Circuit action—induced infringement cannot now be found unless there is an underlying act of direct infringement performed by one party or someone acting under that party’s direction and control. That said, the opinion leaves open the possibility for further action at the appellate level—so this long–running dispute in which the Federal Circuit’s initial panel opinion issued in 2010 seems poised to run a little longer.

In the other case decided today, Nautilus v. BioSig Instruments, Justice Ginsburg’s opinion erased the Federal Circuit’s definition of indefinite patent claims as those that are “insolubly ambiguous.” In its place, the Supreme Court substituted the following: “[W]e hold that a patent is invalid for indefiniteness if its claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those of skill in the art about the scope of the invention.” This standard, the opinion says later, “mandates clarity, while recognizing that absolute precision [in claim–drafting] is unattainable.” It seems reasonably certain that this standard will offer a clearer path to invalidity for accused infringers than the Federal Circuit’s now–defunct, patent–friendly articulation.

Patent Opinion Day: Supreme Court Twice Reverses Federal Circuit