In Nautilus, Inc. v. Biosig Instruments, Inc., the Court unanimously ruled 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 evaluating definiteness, the Court noted these undisputed principles: (1) definiteness is to be evaluated from the perspective of someone skilled in the relevant art; (2) in assessing definiteness, claims are to be read in light of the patent’s specification and prosecution history; and (3) definiteness is measured from the viewpoint of a person skilled in the art at the time the patent was filed.
The Court emphasized that the definiteness requirement represents a “delicate balance” between the limitations of language and the need to provide clear public notice of patent scope. The court noted that “[t]he definiteness requirement . . . mandates clarity, while recognizing that absolute precision is unattainable.”
The Court further rejected the Fed Circuit’s “insolubly ambiguous” and “amenable to construction” standards for indefiniteness, explaining that “[i]t cannot be sufficient that a court can ascribe some meaning to a patent’s claims; the definiteness inquiry trains on the understanding of a skilled artisan at the time of the patent application, not that of a court viewing matters post hoc.” (emphasis in original). The Court also rejected the notion that the presumption of validity justified a more relaxed definiteness standard, because “this presumption of validity does not alter the degree of clarity that §112, ¶2 demands from patent applicants.” However, the Court left open the possibility that factual disputes pertinent to indefiniteness could be subject to the clear-and-convincing-evidence standard.
The Supreme Court declined to apply its indefiniteness test to the claims at issue, instead remanding the issue to the Federal Circuit.
In Limelight Networks, Inc. v. Akamai Technologies, Inc., a unanimous Supreme Court ruled that there can be no liability for inducing infringement if there is no accompanying direct infringement. The Court reversed the Federal Circuit’s holding that a defendant that carried out some steps of a method patent and encouraged customers to carry out the remaining steps could be liable for inducement even though neither the defendant nor the customers were liable as direct infringers.
The Court held that the Federal Circuit erred when it reasoned that, though no person had violated the provisions of § 271(a), a “direct infringement” sufficient to serve as predicate for inducement liability could nevertheless be held to have occurred. Section 271(b) does not create liability for inducing conduct that does not constitute direct infringement. Under Deepsouth Packing, noninfringing conduct—though infringing if committed in altered circumstances—cannot form the basis for contributory infringement. The same rule applies for inducement.
The Court rejected Akamai’s arguments that it should not matter that no one committed direct infringement, because the harm to the patentee was equivalent. Because neither Limelight nor its customers violated § 271(a), no direct infringement was committed, and as such, the patentee’s rights had not been violated.
The Court also rejected Akamai’s efforts to analogize § 271(b) to the federal aiding and abetting statute. Applying criminal law’s prohibition against divided commission of a crime would be inconsistent with the Patent Act’s “cornerstone principle that patentees have a right only to the set of elements claimed in the patents and nothing further.” The Court also held that, to whatever extent pre-Patent Act law might have permitted liability against Limelight, such was again inconsistent with the Patent Act’s overall approach to patent liability. The Court acknowledged concern that some might use its holding to strategically evade liability through divided performance of method patent steps, but concluded that its holding was required by the Patent Act’s text and structure.
Finally, the Supreme Court rejected Akamai’s invitation to review current standards for direct infringement under § 271(a), e.g., Muniauction. Such analysis was not contemplated by the petition for certiorari.
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