IP Update, Vol. 12, No. 4

Editor: Marc S. Weiner, Esq.

A Close Look At The Supreme Court Decision In Limelight v. Akamai

On June 2, 2014, the Supreme Court handed down the long-awaited decision in Limelight v. Akamai, which considered the issue of whether a party could be liable for inducing infringement under 35 U.S.C. §271(b) in a situation where no one single [controlling] party is liable for direct infringement under 35 U.S.C. §271(a).  In their decision the Supreme Court overturned the earlier ruling of the CAFC and held that if there is no direct infringement under 35 U.S.C.§271(a) there can be no liability for inducing infringement under 35 U.S.C.§271(b).   However, the Court stated that their decision was predicated by the earlier holding of the CAFC in Muniauction, Inc. v. Thomson Corp.,232 F. 3d 1318 (2008), which held that for there to be direct infringement under 35 U.S.C.§271(a) a single party must be responsible (either themselves or through the control of a third party), for the complete infringement of the claimed invention.   Essentially the Court instructed that the same standard dictated in Muniauction for determining liability for direct infringement under 35 U.S.C.§271(a) must be applied to a determination whether there is the prerequisite of the direct infringement required for a finding of inducing infringement.     However, in the decision the Court also invited the CAFC to revisit the Muniauction holding.   As such, the question of whether liability for inducing infringement may be found even if a single party cannot be found liable for direct infringement possibly remains open for further consideration by the CAFC.  However, until and unless the CAFC chooses to reverse the Muniauction holding, under Limelight if there is no direct infringement under 35 U.S.C. §271(a), there can be no inducement of infringement under 35 U.S.C. 271(b).

Summary provided by MaryAnne Armstrong, Ph.D.

Supreme Court Decision in Nautilus, Inc. v. Biosig Instruments, Inc.

On June 2, 2014, the Supreme Court handed down a decision abolishing the Federal Circuit’s “insolubly ambiguous” standard in determining whether a patent is invalid for indefiniteness. Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369, 2014 BL 151635 (U.S. June 02, 2014). According to the Federal Circuit’s “insolubly ambiguous” standard, a patent claim passes the 35 U.S.C. § 112, ¶2 indefiniteness threshold if the claim is amenable to at least one construction.  The Supreme Court found that the Federal Circuit’s articulation of this standard does not satisfy the statue’s definiteness requirement. Slip Op., at 1.  According to the Supreme Court’s new standard, “[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.” Id.

• Background

Biosig is a medical device and exercise equipment company and owns U.S. Patent No. 5,337,753 (“the ‘753 patent). Slip Op., at 3. The ‘753 patent is directed to an improved heart rate monitor. Id. Prior art monitors allegedly did not eliminate noise signals given off by skeletal muscles (“electromyogram” or “EMG” signals), which are caused when users move their arms or squeeze the monitor with their fingers. Id. EMG signals are of the same frequency range as electrical signals generated by the heart (“electrocardiograph” or “ECG” signals). Id. Thus, EMG signals can interfere with ECG signals during heart rate detection. Id. The invention claims to improve on prior art by eliminating noise signals caused by the EMG signals. Slip Op., at 4. Claim 1 of the ‘753 patent comprises, among other elements, an “elongate member” (cylindrical bar) with a display device; “electronic circuitry including a difference amplifier”; and on each half of the cylindrical bar, a live electrode and a common electrode “mounted . . . in spaced relationship with each other.” Id. (Emphasis added.)

Biosig sued Nautilus for infringement alleging that Nautilus sold exercise equipment with Biosig’s patented technology without obtaining any license.  Slip Op., at 5. At the district court, Nautilus moved for summary judgment of, inter alia, invalidity for indefiniteness of the claim term “spaced relationship” (even though the district court construed the term). Slip Op., at 6-7.  The district court granted the motion and found the patent invalid for indefiniteness. Id. The Federal Circuit reversed and remanded. Slip Op., at 7.  The Federal Circuit’s majority opinion stated that a claim is indefinite “only when it is ‘not amenable to construction’ or ‘insolubly ambiguous’.” Id.

• Analysis

Without addressing whether the claim term “spaced relationship” is indefinite, the Supreme Court vacated the judgment of the Federal Circuit and remanded the case for further proceedings consistent with this opinion. Slip Op., at 14. The Supreme Court concluded that the “insolubly ambiguous” standard utilized by the Federal Circuit “tolerates some ambiguous claims but not others,” and that this standard “does not satisfy the statute’s definiteness requirement.” Slip Op., at 1. The Supreme Court stated as follows:

“Cognizant of the competing concerns, we read § 112, ¶2 to require 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.”

Slip Op., at 11.

“It 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. To tolerate imprecision just short of that rendering a claim ‘insolubly ambiguous’ would diminish the definiteness requirement’s public-notice function and foster the innovation-discouraging ‘zone of uncertainty,’ United Carbon, 317 U.S., at 236, against which this Court has warned.”

Slip Op., at 11-12.

Summary provided by Ali M. Imam