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Speedy Supreme Court Decisions in Indefiniteness and Inducement Cases


June 2, 2014 -- AIPLA notes that the Supreme Court in two unanimous opinions today directed a course correction in the Federal Circuit's jurisprudence for definite patent claiming and for finding induced infringement.  The two decisions, handed down less than five weeks following oral argument of those cases, are consistent with AIPLA's amicus filings in each.   
With respect to definite claiming, Justice Ginsburg's opinion for the Court in Nautilus, Inc. v. Biosig Instruments, Inc., U.S. No. 13-369, stressed the importance of clarity and precision in patent claiming while acknowledging the inherent limitations of language to give expression to complex inventions. The Federal Circuit's refusal to invalidate a claim as indefinite unless it is "insolubly ambiguous" fails to require the precision the Patent Act demands, according to the Court. The answer, Justice Ginsburg wrote, is 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. The Court remanded the case to the Federal Circuit for further proceedings, given its clarification of the proper rule.
With respect to induced infringement in Limelight Networks, Inc. v. Akamai Technologies, Inc., U.S. No. 12-786, Justice Alito stressed that one cannot be liable for inducing another party to infringe unless that other party actually committed the infringement, here direct infringement under 35 U.S.C. 271(a).  He stressed that this case is limited to the liability of the "inducer," and that the Court was assuming without deciding that there had to be a single party who directed the various actors.  The Court also remanded this case to the Federal Circuit to expressly decide in the first instance whether Limelight committed direct infringement under 35 U.S.C. 271(a).
AIPLA President Wayne Sobon said "We are pleased that the Supreme Court recognized the need for greater clarity in these areas and moved quickly to provide guidance."

AIPLA, the American Intellectual Property Law Association, was founded in 1897 to maintain a high standard of professional ethics, to aid in the improvement in laws relating to intellectual property and in their proper interpretation by the courts, and to provide legal education to the public and to its members on intellectual property issues. AIPLA is a national bar association constituted primarily of lawyers in private and corporate practice, in government service, and in the academic community.  
AIPLA Contact:
Director of Legal Affairs
(703) 412-4353