Ruling unanimously twice in one day, the Supreme Court of the United States has issued two significant patent decisions that will significantly impact patent litigation in the future.
Claims Must Provide "Reasonable Certainty" Regarding Scope
In its June 2, 2014, opinion in Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court rejected the Federal Circuit's "insolubly ambiguous" standard for definiteness under 35 U. S. C. §112, ¶2, and held "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 claims of a patent must describe with particularity and distinctness the subject matter the inventor regards as the invention. This requirement codified in 35 U. S. C. §112 has been a requirement of U.S. patent law in some form for over 200 years. A lack of definiteness in a claim renders that claim invalid. In revising the definiteness standard, the Court reaffirmed two points:
- Definiteness is to be evaluated from the perspective of one skilled in the relevant art at the time the patent was filed; and
- The claims are to be read in light of the patent's specification and prosecution history.
At issue in the Nautilus case was construction of the term "spaced relationship" in a patent claim assigned to Biosig Instruments Inc. concerning a heart-rate monitor for use during exercise. The district court granted Nautilus' motion for summary judgment that the term "spaced relationship" was indefinite, as the term did not identify a precise space or any parameters for determining appropriate spacing. On appeal, the U.S. Court of Appeals for the Federal Circuit reversed the decision on the grounds that a claim is indefinite only when it is "not amenable to construction" or "insolubly ambiguous."
The Supreme Court vacated the Federal Circuit's decision because the "insolubly ambiguous" standard lacks the precision demanded by 35 U. S. C. §112, ¶2. Writing for the unanimous Court, Justice Ruth Bader Ginsberg recognized the "delicate balance" between requiring definiteness and accounting for inherent limitations of language, noting the definiteness requirement "mandates clarity, while recognizing that absolute precision is unattainable." The proper assessment for definiteness "require[s] that a patent's claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty."
The Supreme Court remanded the case to the Federal Circuit to reconsider the definiteness of Biosig's claim term under the proper standard, leaving open the possibility that it could now be held indefinite.
Limits on Induced Infringement
In a second opinion issued June 2, 2014, the Supreme Court held that a defendant is not liable "for inducing infringement of a patent under 35 U. S. C. §271(b) when no one has directly infringed the patent under §271(a) or any other statutory provision." The question presented to the Supreme Court in Limelight Networks, Inc. v. Akamai Technologies, Inc.focused on induced infringement under §271(b) and not direct infringement under §271(a). In particular, while Limelight performed certain steps of the claimed method - and provided instructions and technical assistance to its customers to perform the remaining steps - there was no dispute that neither Limelight nor its customers performed every claimed step. The Federal Circuit decided, en banc, that "evidence could support a judgment in [Akamai's] favor on a theory of induced infringement," because §271(b) liability arises when a defendant carries out some steps constituting a method patent and encourages others to carry out the remaining steps - even when no one would be liable as a direct infringer in such circumstances.
The Supreme Court observed that "liability for inducement must be predicated on direct infringement" and reversed the Federal Circuit. Writing for the unanimous Court, Justice Samuel Alito succinctly noted, "[I]n this case, performance of all the claimed steps cannot be attributed to a single person, so direct infringement never occurred. Limelight cannot be liable for inducing infringement that never came to pass." The Court declined to review the merits of the Federal Circuit's rule for direct infringement under §271(a) (expressed in its 2008 opinion inMuniauction, Inc. v. Thomson Corp.) - namely, that a method claim's steps have not all been performed as claimed unless they are all attributable to the same defendant (either because the defendant actually performed the steps or because the defendant directed or controlled others who performed them).
The Court remanded the case to the Federal Circuit on the §271(b) induced infringement issue, noting that the "Federal Circuit will have the opportunity to revisit the §271(a) [single-actor direct infringement, perMuniauction] question if it so chooses."