Today, the United States Supreme Court issued two decisions on patents. In Limelight Networks v. Akamai Tech the Court held that direct infringement was required for a finding of inducing infringed. In Nautilus v. BioSig the Court considered patent claim indefiniteness.
In Limelight Networks, Inc. v. Akamai Technologies, Inc. (PDF), the Court reversed the CAFC (see post on en banc decision) and held that there must be direct infringement to establish inducing infringement. The Supreme Court was critical of the lower court’s reasoning:
The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent. A method patent claims a number of steps; under this Court’s case law, the patent is not infringed unless all the steps are carried out. See, e.g., Aro, supra, at 344 (a “patent covers only the totality of the elements in the claim and . . . no element, separately viewed, is within the grant”). This principle follows ineluctably from what a patent is: the conferral of rights in a particular claimed set of elements. “Each element contained in a patent claim is deemed material to defining the scope of the patented invention,” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U. S. 17, 29 (1997), and a patentee’s rights extend only to the claimed combination of elements, and no further.
The Federal Circuit held in Muniauction that a method’s steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them. See 532 F. 3d, at 1329–1330. Assuming without deciding that the Federal Circuit’s holding in Muniauction is correct, there has simply been no infringement of the method in which respondents have staked out an interest, because the performance of all the patent’s steps is not attributable to any one person. And, as both the Federal Circuit and respondents admit, where there has been no direct infringement, there can be no inducement of infringement under §271(b).
In Limelight, no one party carried out all of the steps of the method claims to meet the test for direct infringement. The Supreme Court refused to consider the test for direct infringement saying, “Any such anomaly, however, would result from the Federal Circuit’s interpretation of §271(a) in Muniauction. A desire to avoid Muniauction’s natural consequences does not justify fundamentally altering the rules of inducement liability that the text and structure of the Patent Act clearly require…” The Court remanded the proceeding back to the CAFC. It will be interesting to see if the test for direct infringement of method claims by multiple parties is reconsidered by the CAFC.
In Nautilus, Inc. v. Biosig Instruments, Inc (PDF), the Court also reversed the CAFC and criticized its test for ambiguity in the claims:
According to the Federal Circuit, a patent claim passes the §112, ¶2 threshold so long as the claim is “amenable to construction,” and the claim, as construed, is not “insolubly ambiguous.” 715 F. 3d 891, 898–899 (2013). 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.