Supreme Court Will Review Limelight and Nautilus

Continuing its heightened interest in IP law, on Friday the Supreme Court granted petitions for cert. to review Limelight Networks, Inc. v. Akami Technologies, Inc., U.S., No 12-786 and Nautilus, Inc. v. Biosig Instruments, Inc., U.S., 13-339. The other two grants were in a (c) and TM and so of less interest to this patent attorney.

In Limelight, the Fed. Cir. held that a defendant could be found liable for inducing infringement under 271(b) even if no one party performed the acts necessary to meet the requirement that there be direct infringement of 271(a). In the biotech/pharma space, this question becomes relevant when a testing lab measures the level of a biomarker but a specialist draws the diagnostic conclusion required by the claim.

I had not commented on the Nautilus decision in the past because the Fed. Cir. “rule” holding that a claim term violated 112(2) only if it was “insolubly ambiguous” was favorable to patentees (and, indirectly, to prosecutors). This “rule” has been challenged as essentially too lenient to said ambiguous patent claims - and the Court may consider if the presumption of validity of an issued patent lowers the bar of the statutory requirement of particular and distinct patent claiming.

I don’t think that the Fed. Cir. has erred in attempting to preserve the validity of an issued claim by reading it in view of the specification, even including “inherent parameters”, but the Supreme Court seldom takes up a Fed. Cir. decision to give them praise for preserving patentees’ shrinking bundle of rights.

2 Responses to “Supreme Court Will Review Limelight and Nautilus”

  1. Paul Cole says:

    If you look up the word “definition” in Websters, you will find that it has a multiplicity of possible meanings, as do nearly all words in the English language. As Cardinal Richlieu memorably said: “Give me six lines written by the most honorable of men, and I will find an excuse in them to hang him.” As most indepndent claims in most patents are more than six lines long, what chance does a patentee stand?

  2. EG says:

    “the Supreme Court seldom takes up a Fed. Cir. decision to give them praise for preserving patentees’ shrinking bundle of rights.”

    Warren,

    Do I detect a note of cynicism/sarcasm in this remark?