The United States Supreme Court on Monday issued two unanimous decisions that affect patent law in the United States. Here are our brief reviews about these decisions and their meaning for your business.
Supreme Court Eases Standard For Proving Patent Indefiniteness – Or Does It?
By Andrew N. Stein
Section 112, paragraph 2 of the Patent Act requires that a patent “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor… regards as the invention.” The Federal Circuit consistently has held that this statutory requirement is met, and a claim is not invalid as indefinite, so long as the claim is “amenable to construction,” and is not, as construed, “insolubly ambiguous.”
However, yesterday, in Nautilus, Inc. v. Biosig Inst., Inc., the United States Supreme Court unanimously held that the Federal Circuit’s indefiniteness standard bred “lower court confusion” because it “lack[ed] the precision §112, ¶2” demands.
Writing for the Court, Justice Ruth Bader Ginsburg went so far as to say that the standard “can leave courts and the patent bar at sea without a reliable compass.”
Commentators and others in the patent bar are already reading the Nautilus opinion as lowering the bar for proving a patent is indefinite. However, much uncertainty remains as to the mechanics of how invalidity will be shown under the Supreme Court’s new standard. Read the full story here.
The Supreme Court Clarifies Test for Section 271(b) Induced Infringement, Invites Federal Circuit to Revisit Muniauction Test
Induced infringement, under § 271(b), requires a finding of a predicate direct infringement, under § 271(a).
This proposition, a “simple truth” according to the Supreme Court, does not, at first blush, seem controversial. The Court, however, found that the en banc Federal Circuit misapplied this rule by failing to apply (or reconsider) the Federal Circuit’s own precedent in Muniauction, Inc. v. Thomson Corp. The Supreme Court, thus, reversed.
Justice Samuel Alito, delivering the opinion on behalf of a unanimous Court, reasoned that induced infringement, under 35 U.S.C. § 271(b), requires an underlying direct infringement. Read the full story here.