Supreme Court Reshaping Patent Law

By: Eric G. Soller

The Supreme Court is reviewing more patent cases in this term than in the entire decade of the 1990’s. This activity has most recently resulted in two rulings that will shape patent litigation for years to come. In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court reversed the standard that had been applied for years by the Federal Circuit as to whether a patent is definite under 35 U.S.C. § 112, ¶ 2. The Federal Circuit’s standard was that a patent lacked “definiteness” if it was “insolubly ambiguous.” The Supreme Court opined that the prior standard lacked precision because such terminology “can breed lower court confusion” and “leave courts and the patent bar at sea without a reliable compass,” however, noting the “delicate balance” between requiring definiteness and accounting for the inherent limitations of language, “recognizing that absolute precision is unattainable.” The Supreme Court stated that the proper assessment of definiteness requires, “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.”

In Limelight Networks, Inc. v. Akamai Technologies, Inc., the Supreme Court redefined liability for “inducing infringement of a patent under 35 U.S.C. § 217(b) when no one has directly infringed a patent under § 271(a) or any other statutory provision.” The Supreme Court definitively stated that “liability for inducement must be predicated on direct infringement.” The Supreme Court reversed the Federal Circuit and remanded the case, instructing that the “Federal Circuit will have the opportunity to revisit the § 271(a) question if it chooses.” The Supreme Court held that if “performance of all of the claimed steps cannot be attributed to a single person,” direct infringement has not occurred, and therefore, inducing infringement cannot be found.

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