Also today, the Supreme Court made method claims harder to infringe

by John Roberts on June 2, 2014

Today the U.S. Supreme Court also decided Limelight Networks, Inc. v. Akamai Technologies, Inc., and reversed the Federal Circuit’s en banc holding that a defendant need not perform all of the steps of a claim to infringe where it performs some and induces third parties to perform the rest. No. 12-786, slip op. at 1 (June 2, 2014). The Federal Circuit had reached its now-reversed holding in the en banc decision by finding that direct infringement under 35 U.S.C. §271(a) was not required; inducement merely required that the claimed steps be performed. In doing so, the Federal Circuit had created a different standard for direct infringement when it occurred in an inducement scenario.

But today the Supreme Court reiterated the basic tenet that inducement can occur “if, but only if,” there is direct infringement. Id. at 5. The Court then indicated that the Federal Circuit’s evaluation of direct infringement was clearly flawed:

The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent. A method patent claims a number of steps; under this Court’s case law, the patent is not infringed unless all the steps are carried out.
. . . .
The Federal Circuit’s contrary view would deprive §271(b) of ascertainable standards. If a defendant can be held liable under §271(b) for inducing conduct that does not constitute infringement, then how can a court assess when a patent holder’s rights have been invaded?

Id. at 5-6.

The Supreme Court acknowledged that they have thus created a loophole that will permit; “a would-be infringer [to] evade liability by dividing performance of a method patent’s steps with another whom the defendant neither directs nor controls.”

As with the Nautilus, Inc. v. Biosig Instruments, Inc. case also decided today by the Supreme Court, the decision here places additional limits on the scope of patent protection. Importantly, in Limelight the secondary actors were not under the “direction or control” of the principal actor, but instead were customers that were not agents of Limelight. This new decision highlights the importance of careful drafting when creating method claims, since one party, or their agents, must perform all the steps in the claimed method.

No. 12–786. Argued April 30, 2014—Decided June 2, 2014

John Roberts



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