Move over, Congress: The Supreme Court may be this year’s game-changer on patent reform

by Thompson Coburn LLP
Contact

In a normal year, the U.S. Supreme Court does not normally grant certiorari to patent law cases. In a good year, the Supreme Court may grant certiorari to a single case impacting patent law. In 2014, the nation’s highest court will hear at least five cases that will impact so-called patent troll litigation. Because such decisions tend to have an immediate, and often profound, effect on patent litigation, there is every reason to believe that these five cases may very well impact patent troll litigation far more than any proposed patent reform legislation currently pending in Congress.

So what are the issues in these cases and how could they impact patent troll litigation?

Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369

Issue

This case deals with the concept of patent indefiniteness. Patent claims are required to be written so that they particularly point out and distinctly claim the subject matter of the invention. Because these claims inform the public of the bounds of the protected invention, the patent law requires that the defined scope of the claims be sufficiently definite to inform the public. Patent law thus finds patent claims to be indefinite only when they are “not amenable to construction” or “ insolubly ambiguous.”

In this case, Nautilus successfully argued that Biosig’s patent claims were invalid because of indefiniteness because Biosig’s patent claims required there to be a “spaced relationship” between two parts but did not specify how much space was sufficient. The District Court agreed with Nautilus but the Federal Circuit reversed.

How would it impact patent troll litigation?

Many of the patent claims asserted by patent trolls include ambiguous or difficult-to-define patent claim terms. This is often a desirable characteristic of patent troll patents — it allows the troll to assert the patent as broadly as necessary to cover the allegedly infringing products at issue. Further guidance from the Supreme Court on what constitutes indefinite claim language could increase the description necessary to obtain a patent and provide additional ammunition for attacking vague patent troll patents.

Limelight Networks, Inc. v. Akamai Technologies, Inc., et al., No. 12-788

Issue

This case involves induced patent infringement and whether there must be a direct infringer before there can be inducement.

Under patent law, you can infringe a patent directly or indirectly. To directly infringe, you must perform each and every limitation in a patent claim. To indirectly infringe, you must either sell a product that can only be used to infringe a patent (contributory infringement) or you encourage others to infringe a patent (induced infringement). Additionally, until last year, you could not infringe a patent indirectly unless some single entity, somewhere, was performing all the required limitations of the claim.

But with this case, the Federal Circuit determined that the existence of a single direct infringer was unnecessary to prove induced infringement under certain circumstances. The Federal Circuit held that where the alleged inducing infringer (i) knew of the plaintiff’s patent, (ii) performed all but one of the steps of the method, (iii) encouraged its customers to perform the final step of the claimed method, and (iv) the customers performed the step, there was induced infringement (even though no single entity anywhere was performing each of the required steps).

How would it impact patent troll litigation?

Patent troll litigation often involves claims of infringement of software method patents. These patents include a series of steps performed by different processors or servers. Given the interconnectivity of the Internet and Internet users, it can be difficult to prove that any one entity is performing all of the required steps of a software method patent. Under this case, however, there is no longer a need to show that a single entity is performing all the steps. This greatly eases the burden of showing infringement of software method patents. If this case were to be reversed, however, it would make it much more difficult for patent trolls with software method patents to prove infringement.

Alice Corp. Pty. Ltd. v. CLS Bank International, et al., No. 13-298

Issue

In this case, the Supreme Court is asked to determine whether patent claims to computer-implemented inventions (including claims to systems and machines, processes, and items of manufacture) are directed to patent-eligible subject matter. In other words, the Supreme Court is being asked to set the boundaries for when a computer software patent is eligible for patent protection and when it is simply an unpatentable algorithm.

How would it impact patent troll litigation?

Computer software patents are the lifeblood of patent troll litigation. These patents use somewhat nebulous terms to encompass generic functionality in a way that can often be interpreted to cover widely disparate technologies. If the Supreme Court were to set a higher bar for obtaining a software patent, it would open up many existing software patents to invalidity challenges.

Octane Fitness, LLC v. Icon Health & Fitness, Inc., No. 12-1184 and Highmark Inc. v. Allcare Health Management Systems, Inc., No. 12-1163

Issue

The key issue with both of these cases is the award of attorneys’ fees in patent cases. The patent law allows courts to award attorneys’ fees to the prevailing party in “exceptional cases.” In practice, the Federal Circuit has generated a body of case law that sets an often exactingly high burden for accused infringers to meet in order to be awarded attorneys’ fees. The result is that patent holders can often make outrageous claims of infringement with dubious support for their positions and force defendants to hire counsel at great cost in order to fight such claims without genuine fear that the court will ever award the accused infringer attorneys’ fees.

How would it impact patent troll litigation?

If the Supreme Court were to lower the bar for awarding attorneys’ fees in patent cases, one would expect to see a sharp decrease in dubious patent law suits. Under such a revised standard, patent plaintiffs would face serious and expensive consequences for pursuing dubious patent infringement claims. Such a result would serve to temper the aggressiveness of some patent plaintiffs, provide a disincentive to bring spurious patent infringement claims, and conserve judicial and legal resources for those parties with serious claims of infringement.

 

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.

© Thompson Coburn LLP | Attorney Advertising

Written by:

Thompson Coburn LLP
Contact
more
less

Thompson Coburn LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Privacy Policy (Updated: October 8, 2015):
hide

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.

Security

JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.
Feedback? Tell us what you think of the new jdsupra.com!