Federal Circuit is Reversed, Twice

USSupremeCourtWestFacadeThe Supreme Court has issued two opinions in patent cases today, in both cases reversing the Federal Circuit.

Nautilus, Inc. v. Biosig Instruments, Inc.

In the first opinion, the Court was reviewing the Federal Circuit’s standard for indefiniteness.  As noted previously,  patent applicants must particularly point out and distinctly claim their invention.  The Federal Circuit used a legal standard for proving that a claim was indefinite that was very difficult to meet, erring on the side of the patent owner.  Justice Ginsburg delivered the opinion for a unanimous Supreme Court, which reversed the Federal Circuit standard.

We conclude that the Federal Circuit’s formulation, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement. In place of the “insolubly ambiguous” standard, we 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 skilled in the art about the scope of the invention.

The Supreme Court has thus overruled the Federal Circuit’s “insolubly ambiguous” standard in favor of a “reasonable certainty” standard when the claims are read in light of the specification and prosecution history.

The Court remanded the case to the Federal Circuit for further determination of the patent in this suit.

Limelight Networks, Inc. v. Akamai Techs., Inc.

In 2012, a fractured Federal Circuit permitted that multi-party infringement for induced infringement, even in the absence of a direct infringement by a single party.  This result was contrary to the general rule that a party can only be liable for inducement to infringe a patent if there is direct infringement of the patent.

A unanimous Supreme Court, per Justice Alito, has reversed the earlier Federal Circuit opinion.  He reasons that this case is really quite straight forward.  The Court reiterated that a party can only be liable for induced infringement if there is a direct infringement of the patent.

The Federal Circuit had previously decided in Muniauction that to infringe a method claim, the same entity must perform each step of the claim.  The parties dispute whether this holding was correct, but the Supreme Court refused to address that issue.  The Court did note, however, that if that is correct, there can be no liability for induced infringement either.  A party cannot be held liable for inducing conduct that is not itself infringement.  The Supreme Court was unpersuaded by analogies to other areas of tort law.

The Court’s holding in this case is quite simple.  If there is no direct infringement, there can be no induced infringement.  If the Federal Circuit revisits the definition of direct infringement, such as by overruling Muniauction to permit multi-party direct infringement, then there could possibly be multi-party induced infringement.  Until that time, the Court answers the question in the negative.

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