Defeating Patent Infringement Claims Using the Supreme Court's New Induced Infringement and Indefiniteness Standards | Practical Law

Defeating Patent Infringement Claims Using the Supreme Court's New Induced Infringement and Indefiniteness Standards | Practical Law

A discussion of key considerations for an accused infringer's counsel concerning two recent US Supreme Court decisions that clarify the standards for induced infringement (Limelight Networks, Inc. v. Akamai Technologies, Inc.) and indefiniteness (Nautilus, Inc. v. Biosig Instruments, Inc.). The new standards should make it easier to defeat patent infringement claims, especially claims by non-practicing entities. 

Defeating Patent Infringement Claims Using the Supreme Court's New Induced Infringement and Indefiniteness Standards

by Practical Law Intellectual Property & Technology
Published on 10 Jun 2014 • USA (National/Federal)
A discussion of key considerations for an accused infringer's counsel concerning two recent US Supreme Court decisions that clarify the standards for induced infringement (Limelight Networks, Inc. v. Akamai Technologies, Inc.) and indefiniteness (Nautilus, Inc. v. Biosig Instruments, Inc.). The new standards should make it easier to defeat patent infringement claims, especially claims by non-practicing entities.
A substantial percentage of new patent infringement lawsuits are brought by non-practicing entities (NPEs), who often assert patent claims that:
  • Cover a method or process.
  • Contain ambiguous claim limitations.
This strategy makes it difficult for an accused infringer's counsel to assess:
  • Who allegedly performed the claimed method.
  • How the accused infringer induced other parties to perform the patented method.
  • The claimed invention's scope.
On June 2, 2014, the US Supreme Court issued two decisions that should make it easier for accused infringers to defeat patent infringement claims by NPEs and other patent owners that raise these concerns.

The Limelight and Nautilus Decisions

In Limelight Networks, Inc. v. Akamai Technologies, Inc., the Supreme Court:
  • Held that liability for inducing patent infringement under 35 U.S.C. § 271(b) only arises if there is direct infringement under 35 U.S.C. § 271(a).
  • Rejected the US Court of Appeals for the Federal Circuit's standard that inducement liability does not require direct infringement attributable to a single entity.
(134 S. Ct 2111 (June 2, 2014).)
In Nautilus, Inc. v. Biosig Instruments, Inc., the Supreme Court:
  • Held that a patent claim is invalid for indefiniteness if it fails to inform a skilled artisan of the invention's scope with reasonable certainty when read in light of the specification and prosecution history.
  • Rejected the Federal Circuit's "insolubly ambiguous" indefiniteness standard, which was more difficult for accused infringers to satisfy.
(134 S. Ct 2120 (June 2, 2014).)
An accused infringer's counsel should evaluate whether these recent Supreme Court decisions enable her client to defeat a patent infringement claim. For more tips and practical guidance on litigating against NPEs, see Patent Litigation Against Non-practicing Entities Toolkit.

Evaluate the New Defense to an Induced Infringement Claim

Owners of method patents often assert claims of induced patent infringement under 35 U.S.C. § 271(b), especially if the accused infringer sells a product or service that third-parties use to perform the patented method. The Supreme Court's Limelight decision:
  • Requires that the direct infringement caused by the inducement must be attributable to a single entity.
  • Allows an accused infringer to defeat an induced infringement claim when no single entity performs all the claimed method steps and either:
    • no combination of parties perform all the claimed steps; or
    • a combination of parties perform all the claimed steps, but no single entity directs or controls all the parties who perform the claimed steps.
If this new defense may apply, the accused infringer's counsel should:
  • Seek relevant discovery, including facts concerning:
    • the method steps allegedly performed by the accused infringer;
    • the method steps allegedly performed by other parties;
    • the relationship between the accused infringer and the parties who allegedly perform the method steps not carried out by the accused infringer; and
    • the patent owner's evidence that the accused infringer allegedly controls or directs third parties to perform the claimed method.
  • Consider moving to dismiss the inducement claim if the patent owner fails to adequately plead that the direct infringement is attributable to a single entity. For more information on moving to dismiss inducement claims, see Practice Note, Patent Litigation: Motions to Dismiss: Failure to State an Indirect Infringement Claim.
  • Consider moving for summary judgment of no induced infringement.

Evaluate the New Indefiniteness Standard

Patent owners often assert claims with ambiguous claim limitations because it provides greater flexibility for proving infringement and defeating invalidity challenges. While 35 U.S.C. § 112, ¶ 6 (now 35 U.S.C. 112(b)) requires claims to particularly point out and distinctly claim the invention, accused infringers rarely prevailed under the Federal Circuit's "insolubly ambiguous" indefiniteness standard. The Supreme Court's Nautilus decision makes it easier for accused infringers to prove indefiniteness because it requires claims to inform skilled artisans of the invention's scope with "reasonable certainty." If this defense may apply, the accused infringer's counsel should:
  • Seek relevant discovery, including facts concerning:
    • the patent owner's construction of the ambiguous term and supporting evidence;
    • the understanding of the ambiguous term by skilled artisans, including the named inventors; and
    • the reasonableness of alternative constructions of the ambiguous term, such as dictionary definitions and other printed publications.
  • Retain an expert to render an opinion concerning the reasonableness of alternative constructions of the ambiguous term.
  • Consider moving for summary judgment on this issue.