Is “Insolubly Ambiguous” the Correct Standard to Determine Compliance with Sec 112?

by McDermott Will & Emery
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The U.S. Supreme Court granted certiorari on a petition challenging the U.S. Court of Appeals for the Federal Circuit’s standard for determining when a patent claim is indefinite under 35 U.S.C. §112, ¶ 2.  See IP Update, Vol. 16, No. 5.  Under the Federal Circuit’s 2005 ruling in Datamize LLC v. Plumtree Software Inc. (IP Update, Vol. 10, No. 1), a claim is invalid only if it cannot be construed or is “insolubly ambiguous.”  Nautilus, Inc. v. Biosig Instruments, Inc. (Case. No. 13-369, cert granted Jan. 10, 2014). 

The petition asks two questions:

  • Does the Federal Circuit’s acceptance of ambiguous patent claims with multiple reasonable interpretations—so long as the ambiguity is not “insoluble” by a court—defeat the statutory requirement of particular and distinct patent claiming?
  • Does the presumption of validity dilute the requirement of particular and distinct patent claiming?

Supreme Court to Consider Inducement in the Context of Divided Infringement

The Supreme Court granted cert on the question of whether infringement can be found when more than one party performs steps of a patented method.  Limelight Networks Inc. v. Akamai Techs. Inc., (Case No. 12-786, review granted Jan. 10, 2014).

The question presented is:

Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. §271(b) even though no one has committed direct infringement under §271(a).

The U.S. Court of Appeals for the Federal Circuit, sitting en banc, divided 6-5 in overturning its own precedent, concluding that a patent owner claiming induced infringement under Section 271(b) no longer had to establish as a predicate that a single entity was liable for direct infringement under Section 271(a). Rather, the Federal Circuit explained that the holder of a method claim can prevail if it can show that the accused inducer performs some steps of the claim and induces an end user to perform the other steps. Akamai Technologies v. Limelight Networks (IP Update, Vol. 15, No. 7).

In its brief, the U.S. government called for a reversal of the Federal Circuit’s new inducement standard, which it characterized as “a significant expansion of the scope of inducement liability… that is not justified under a proper understanding of section 271.” The government urged that if a “statutory gap” exists in the infringement statute, it is up to Congress to fill it.  See IP Update, Vol. 16, No. 12.

Is Internet Streaming a “Public Performance” of a TV Program?

The U.S. Supreme Court granted cert on a petition challenging the U.S. Court of Appeals for the Second Circuit’s determination that Aereo Inc.’s internet streaming service did not infringe the copyright in the program content based on the legal conclusion that transmission of the programing to individual Internet subscribers does not constitute a “public performance” under the Copyright Act. American Broadcasting Cos. v. Aereo, Inc. (Case No. 13-461, cert granted Jan 10, 2014).  See IP Update, Vol. 16, No. 5 for discussion of the 2d Circuit decision.

The broadcaster’s petition argued that the 2d Circuit’s interpretation of the public performance right constitutes “nonsensical reasoning [that] cannot be reconciled with the plain text of the Copyright Act or Congress’ manifest intent to include retransmission services within the scope of the public-performance right.”

Aereo did not oppose the petition, noting that while there was not yet a circuit split on the issue, in view of the large number of law suits it faced, such a split was likely and it agreed that the high court should consider the issue.

The petition identified the question presented as:

Whether a company “publicly performs” a copyrighted television program when it retransmits a broadcast of that program to thousands of paid subscribers over the internet.

Can a Lanham Act Claim Be Subject to FDA Preemption?

The U.S. Supreme Court granted a petition for certiorari challenging the U.S. Court of Appeals for the Ninth Circuit’s determination that a Lanham Act false advertising claim was barred by the Federal Food, Drug, and Cosmetics Act.  Pom Wonderful LLC v. The Coca-Cola Co., (Case No. 12-761, cert granted Jan 10, 2014).

Pom Wonderful challenged Coca-Cola’s labeling of its product as “Pomegranate Blueberry” when the beverage contained just 0.3 percent pomegranate juice and 0.2 percent blueberry juice. More than 99 percent of the content was apple and grape juice. The 9th Circuit affirmed summary judgment for Coca-Cola, concluding that the FDA’s rules regarding false and misleading food and beverage labels limited claims under the Lanham Act. (IP Update, Vol. 15, No. 6). According to the 9th Circuit, the existence of these FDA regulations preempted false advertising claims based on food and beverage labels.

The U.S. government filed a brief taking the position that the 9th Circuit had misconstrued the scope of the preemptive effect of the FDCA but that the Ninth Circuit result was correct in this instance because Coca-Cola’s product was labeled in a manner specifically allowed by the FDCA.

The Supreme Court nevertheless decided to grant review.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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