Method patents: divide and conquer

The US Supreme Court is not known for unanimity. It is also not known for short opinions. Yet looking back at the court’s recent patent-related decisions, I was at first surprised to see that both of these gross generalisations have been turned on their heads. Over the last few years, the court’s patent decisions have been both brief and nearly unanimous.

The court’s patent-related harmony and brevity can be explained by two other gross generalisations. First, the court fully believes in the bogeyman of the so-called ‘patent thicket’ and its stifling of innovation with an impassable overgrowth of property rights—an overgrowth that has been nurtured by the US Patent and Trademark Office (USPTO) and the Court of Appeals for the Federal Circuit (CAFC).

Second, the court has decided to square off against what it sees as a menacing legal overgrowth by applying a weed killer to the status quo of US patent law (see, for examples, the patent-eligibility rogues’ gallery of Mayo, Myriad, and Alice). Viewed through these filters, the recent opinions by the US Supreme Court should not be the least bit surprising. After all, if judgments are driven by a shared belief in the imperative to act broadly against patents, then extensive legal reasoning and statutory interpretation is unnecessary, and it is predictable that judgments will limit not only patent eligibility, but also patent enforceability.

The court’s recent opinion in Limelight Networks, Inc v Akamai Technologies, Inc (Limelight) does both. A bare-bones summary of Limelight doesn’t reveal anything too out of the ordinary. The dispute involved a patent directed to a method for delivering digital content over the internet. Limelight was accused of infringement, but both parties agreed that Limelight did not itself carry out all of the claimed steps. Instead, it performed some of the steps, and provided instructions to its customers to perform the remaining steps.

The CAFC, sitting en banc, determined that Limelight’s activity met the standard of induced infringement under 35 USC §271(b). In contrast however, the Supreme Court reversed this decision, and held that to be found liable for inducing another to infringe a method patent, a single actor (or an agent of that actor) must carry out all of the method’s steps. Seems relatively straightforward and benign, doesn’t it?

Well, here is the problem: the CAFC came to its conclusion through good old-fashioned statutory interpretation that highlighted the legislative history of the inducement law, and which considered the context of the technology at issue. 35 USC §271(b) became part of US patent law in 1952. According to the Congressional testimony of one of the law’s drafters, the statute was intended to capture induced infringement including infringing activity divided between multiple actors. A drafter of the 1952 law stated that changes in telecommunications technology required the change.

"the Supreme Court’s opinion did not address either the 1952 legislative history, or the impact on certain technologies that will result from providing potential infringers a guide to risk-free infringement."

The CAFC recognised that in the second decade of the 21st century, as in the middle of the 20th, certain patented methods can be easily performed by multiple actors, and to preserve the value of such patents it is necessary to enable their enforcement. In contrast, the Supreme Court’s opinion did not address either the 1952 legislative history, or the impact on certain technologies that will result from providing potential infringers a guide to risk-free infringement. Given the current clear anti-patent bias, I might be dismayed by the court’s decision, but I’m not terribly surprised.

Why it matters

On the face of it, Limelight is an enforcement case, focused on computer-implemented methods of data distribution. Why should it matter to anyone outside this technology area? Why do I care, when I spend most of my time drafting and prosecuting life sciences applications? I care because Limelight has significant implications for method patents in all fields, including methods of medical diagnostics which seem to have taken a further hit, in addition to the Supreme Court’s 2012 decision in Mayo v Prometheus.

After Mayo, methods of diagnosis are patent-ineligible if they “merely” correlate the presence of a molecule with a biological condition. A way out of the problem has been to add post-diagnosis activity, for example, a specific treatment. There is no question that this is not a great claim (I was taught very early to avoid drafting methods that are likely to need to be performed by multiple actors), but after Mayo it has been one of few remaining options for claiming medical diagnostic methods. The CAFC’s opinion in Limelight added significant value to (and hope for) these methods; value which has now been taken away by the Supreme Court.

I am tempted to critique the court’s Limelight opinion, which is lacking on so many levels, including its under-developed legal analysis, and its seemingly wilful blindness to our technological environment. But other than giving me a chance to let off some steam, a critique won’t change our legal reality. So what is there to do?

How is it possible to draft valuable method claims, when the US Supreme Court has provided an “infringement-by-numbers” opinion that frees a potential infringer from liability as long as the steps of a method are performed by different actors?

Limelight was found not to have infringed, even though it performed some steps of the method and instructed its clients to perform the remaining steps. And this is where we may have the answer: include this activity within the scope of the patent, and claim the instructions. To get past Limelight, draft claim sets that have some claims setting out all of the steps of a method, and then also include claims that expressly instruct another actor to perform certain steps, or provide instructions to another for performing certain steps.

The court’s holding in Akamai can be read as instructing potential infringers to ‘divide and conquer'. But in these instructions, we also seem to have a way around this latest attack against patent rights—at least for the moment.

Mike Hammer is head of the US practice at JMB Davis Ben-David. He can be contacted at:  mike.hammer@jmbdavis.com