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

by McDermott Will & Emery

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.

© McDermott Will & Emery | Attorney Advertising

Written by:

McDermott Will & Emery

McDermott Will & Emery 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.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

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.


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 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:

- 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.