Archive for the ‘Infringement’ Category

Supreme Court Will Review Limelight and Nautilus

Monday, January 13th, 2014

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.

Akami/McKesson Decision Re-defines Induced Infringement

Monday, September 10th, 2012

In a 6-5 decision, the Fed. Cir., sitting en banc, decided two appeals which presented questions closely related to when an actor is liable for inducing infringement under 271(b); Akami Technologies, Inc. v. Limelight Networks, Inc. and McKesson Tech’s., Inc. v. Epic Systems Corp., App. No. 2010-1291 (Fed. Cir. August 31, 2012).

The claims at issue were both multi-step method claims.  McKesson’s patent claimed a software application that it argued Epic indirectly infringed when it caused patients to initiate communications providing “My Chart” healthcare information to which the providers would respond. Epic did not perform any of the claimed steps. I won’t discuss the Akami facts, since they are less closely related to life sciences.

The court framed the question as limited to the type of infringing acts that would impart liability for induced infringement under 271 (b) and did not purport to redefine direct infringement under 271(a). The court framed the questions to be resolved as:

“[W]hether a defendant may be held liable for induced infringement if the defendant has performed some of the steps of the claimed method and has induced other parties to commit the remaining steps [as in Akami], or if the defendant has induced other parties to collectively perform all of the steps of the claimed method, but no single party has performed all of the steps itself [as in McKesson].”


Infringement by Unobvious Changes – A Look (Way) Back

Sunday, October 16th, 2011

As a much younger attorney, I gave a presentation at the 1990 AIPLA Annual Meeting:  “A Review of Recent Federal Circuit Decisions Relating to Infringement” (AIPLA Selected Legal Papers, 9, 3 (July 1991)), in which I wrestled with the question of whether or not a novel and unobvious chemical composition would infringe under the doctrine of equivalents.  Since this is the central issue that the Supreme Court will be asked to resolve in Saint-Gobain Ceramics v. Siemens Med. Sol’ns, Supreme Ct. No. 11-301, I thought these excerpts might be of interest:

* * *

“Although no recent case (or any case) was found where the unobviousness of a substituted ingredient led to a holding of non-infringement of an accused composition that otherwise met the tripartite test, such a holding would be appropriate.  At the very least, Atlas Powder Co. v. DuPont DeNemours & Co., 750 F.2d 1569 (Fed. Cir. 1985), suggests that an unexpected result achieved by the accused composition would support a finding of non-interchangeability [and thus, noninfringement].


Inducement of Patent Infringement: Even Without Knowledge of the Patent?

Friday, October 15th, 2010

Under 35 U.S.C. § 271(b) “[w]hoever actively induces infringement of a patent shall be liable as an infringer.”  On October 12th, the Supreme Court has granted certiorari (link below) for the case of Global-Tech v. SEB (S. Ct. No. 10-6) to determine whether “deliberate indifference of a known risk” that infringement may occur satisfies the state-of-mind element of a claim for actively inducing infringement.  Traditionally, the standard has been that the alleged inducer “knew of the patent” as held by DSU Medical Corp. v. JMS Co., Ltd., 471 F.3d 1293 (Fed. Cir. 2006) (en banc).  However, this standard was recently eroded by SEB (T-Fal) v. Montgomery Ward & Co., 594 F.3d 1360 (Fed. Cir. 2010), in which the Federal Circuit held that a subjective “deliberate indifference” to potential patent rights is sufficient, while comparing and disregarding a more objective “should-have-known” standard.  The petition for cert. was supported by an amicus brief co-signed by a number of influential professors, who argued that the inconsistencies should be resolved.

But without actual knowledge being required, no matter whether the standard is an objective test or a more subjective one that attempts to take into account the state of mind of the alleged inducer(s), it is easier to make a claim for inducement of infringement.  Under this standard, to avoid being vulnerable to a claim, companies need to take greater precautions to carefully survey the patent landscape in which they do business, and will be forced to have greater respect for patent rights.  As the Supreme Court approaches settling the question of what is required to satisfy the state-of-mind element of inducement, overarchingly it will be contemplating policies of the enforceability of patents, which is directly associated with the overall value of patents to their owners and licensees.

–Note by Nicholas P. Lanzatella, Schwegman, Lundberg & Woessner.