Limelight v. Akamai Technologies and Nautilus v. Biosig Instruments - Post-Decision SCOTUScast

SCOTUScast 8-4-14 featuring Aaron Panner and Thomas Saunders  

On June 2, 2014, the Supreme Court issued opinions in two property rights cases, Limelight Networks v. Akamai Technologies and Nautilus v. Biosig Instruments.

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.

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