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- Art Gollwitzer, Partner, Michael Best & Friedrich LLP
The question in Limelight v. Akamai Technologies was whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a).
In an opinion delivered by Justice Alito, the Court held unanimously that a defendant is not liable for inducing infringement when no one has directly infringed under Section 271(a) or any other statute. The decision of the U.S. Court of Appeals for the Federal Circuit was reversed and the case remanded.
The questions in Nautilus v. Biosig Instruments were (1) Whether the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations – so long as the ambiguity is not “insoluble” by a court – defeats the statutory requirement of particular and distinct patent claiming; and (2) whether the presumption of validity dilutes the requirement of particular and distinct patent claiming.
In an opinion delivered by Justice Ginsburg, the Court unanimously rejected the Federal Circuit’s “insolubly ambiguous” standard and held instead that a patent is invalid for indefiniteness if its claims, read in light of the patent specification and prosecution history, failed to inform those skilled in the art about the scope of the invention. With respect to the presumption of validity, the Court determined that in this case it ultimately did not affect the particularity requirement. The decision of the Federal Circuit was vacated and the case remanded for consideration under the standard articulated by the Supreme Court.
To discuss the case, we have Aaron M. Panner, Partner, Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C and Thomas G. Saunders, Partner, WilmerHale.
On June 19, 2014, the Supreme Court issued its opinion in Alice Corporation Pty. Ltd. v. CLS Bank International. The question in the case is whether, for purposes of obtaining a patent, claims to computer-implemented inventions – including claims to a computer-implemented system for mitigating settlement risks – are directed to patent-eligible subject matter within the meaning of 35 U.S.C. § 101, as interpreted by the Supreme Court.
In an opinion delivered by Justice Thomas, the Court held unanimously that the claims at issue were drawn to the abstract idea of intermediated settlement, and that merely requiring generic computer implementation failed to transform that abstract idea into a patent-eligible invention. The Supreme Court therefore affirmed the judgment of the United States Court of Appeals for the Federal Circuit. Justice Sotomayor filed a concurring opinion, joined by Justices Ginsburg and Breyer.
To discuss the case, we have Prof. Adam Mossoff, Professor of Law and Co-Director of Academic Programs and Senior Scholar at the Center for the Protection of Intellectual Property, George Mason University School of Law.
The U.S. Supreme Court recently decided another important pair of property rights cases. Nautilus v. Biosig Instruments concerns definiteness and the scope of patents. In Limelight Networks v. Akamai Technologies, the Court held that a defendant is not liable for inducing infringement under 35 U.S.C. § 271(b) when no one has directly infringed under Section 217(a) or any other statutory provision. How important are these decisions? What are their implications?
In its surprisingly short opinion in Alice Corp. v. CLS Bank on June 19, 2014, the Supreme Court invalidated Alice Corporation's patent on a computer-implemented technology for managing risk in financial transactions as claiming an “abstract idea.” In doing so, is the Court continuing a practice it began with its 2010 decision in Bilski v. Kappos, in which it strikes down patents on the grounds that they allegedly cover unpatentable subject matter like an abstract idea or law of nature? Is the Court providing enough legal guidance such that inventors and commercial firms working in the innovation industries can know with certainty if their discoveries or inventions are patentable?