Lawyers react to Limelight, Nautilus rulings
Two US patent decisions have provided guidance for future disputes but there is “still work to be done” to shore up a complicated patent system, lawyers have told WIPR.
Yesterday, June 2, the US Supreme Court issued its judgments in two hotly anticipated cases and in both instances overturned decisions by the US Court of Appeals for the Federal Circuit.
In the cases, Limelight Networks, Inc v Akamai Technologies, Inc and Nautilus, Inc, v Biosig Instruments, Inc, previous rulings that found Limelight and Nautilus liable for infringement were rejected.
The Limelight case centred on whether a defendant could be held liable for patent infringement even if multiple parties had performed different steps of the infringement while the Nautilus ruling provided guidance on the clarity of patent claiming.
Both cases could have an impact on non-practising entities (NPEs), sometimes known as patent trolls, which have been accused of filing excessive lawsuits and demanding licensing fees based on patents with weak claims.
The Limelight decision followed a judgment by the Court of Appeals that ruled the internet content delivery company could be held liable for inducing infringement even though “no one party” had committed direct infringement.
The Supreme Court reversed that decision with a unanimous 9-0 judgment.
Michael Kahn, IP litigation partner at Ropes & Gray LLP in New York, said while the case may seem like a win for potential infringers it is only “one step” towards resolving the question of liability for divided infringement.
“The Supreme Court recognised the “concern” that a defendant can evade liability by having another party, not under the defendant’s direction or control, perform some of the claimed steps,” he told WIPR.
However, said Kahn, the court’s opinion suggested that the appropriate route for addressing the gap in infringement liability would be either for the Court of Appeals to reconsider or for Congress to revise the Patent Statute.
“Whichever route is taken, there is a significant chance that the standard for direct infringement of method claims will once again be changed, so the ultimate winner remains to be seen,” he added.
Antoinette Konski, partner at Foley & Lardner LLP, said the decision “limits the ability” of patent holders to protect technologies that are increasingly relevant in today’s economy.
“We are in an era of specialisation and collaboration,” Konski said, “Digital technology moves information among users … thus, in many instances, more than one individual or entity can be involved in providing a digital service or medical method.”
Also yesterday, the court threw out claims that fitness equipment manufacturer Nautilus infringed a patent belonging to Biosig that is built into fitness machines and used to monitor a user's heartbeat.
The Supreme Court said the Court of Appeals had set the bar too low in allowing patents to be written vaguely.
The court rejected the Federal Circuit’s ruling that a patent claim passes the threshold as long as it is “amenable to construction” and not “insolubly ambiguous”.
The Supreme Court did not rule on the validity of that patent but instead referred it back to the Court of Appeals to reconsider based on its ruling.
Wayne Sobon, president of the American IP Law Association, said the AIPLA was “pleased” that the court “recognised the need for greater clarity” in both areas and “moved quickly” to provide guidance.
