Enter to open, tab to navigate, enter to select
Important Lessons from the Supreme Court's Recent Patent Decisions
Practical Law Legal Update 6-574-4648 (Approx. 4 pages)
Important Lessons from the Supreme Court's Recent Patent Decisions
by Practical Law Intellectual Property & Technology
| Published on 22 Jul 2014 • USA (National/Federal) |
An overview of the six patent decisions from the Supreme Court's October 2013 term and a preview of Practical Law's July 30, 2014 webinar covering the key lessons and implications of the Court's decisions. The Supreme Court's patent decisions include lessons on indefiniteness, inducement, patent eligibility, fee shifting and licensee infringement in declaratory judgment actions.
During its October 2013 term, the US Supreme Court heard oral argument and issued decisions in six different patent cases. The Supreme Court's opinions covered a wide range of patent topics that impact patent prosecution, licensing and litigation, including:
- The burden of proving infringement in declaratory judgment actions. In Medtronic, Inc. v. Mirowski Family Ventures, LLC, the Supreme Court held that the patent owner bears the burden of proving infringement in a declaratory judgment action brought by a patent licensee (134 S. Ct. 843 (Jan. 22, 2014)). For more on the impact of this decision on patent licensees and patent owners in declaratory judgment actions, see Legal Update, Supreme Court: Patent Owner Bears Burden of Proving Infringement in Declaratory Judgment Actions.
- The standard for fee shifting under 35 U.S.C. § 285. In two companion opinions, the Supreme Court overruled the US Court of Appeals for the Federal Circuit, holding that:
- a district court may determine fee shifting under 35 U.S.C. § 285 in its discretion based on the totality of the circumstances (Octane Fitness, LLC v. ICON Health & Fitness, Inc., 134 S. Ct. 1749 (Apr. 29, 2014)); and
- a district court's fee-shifting determination should be reviewed only for abuse of discretion, and not de novo (Highmark Inc. v. Allcare Health Mgmt. Sys. Inc., 134 S. Ct. 1744 (Apr. 29, 2014)).
For more on the Supreme Court's fee-shifting opinions, see Legal Update, Supreme Court Reverses Federal Circuit's Rigid Fee Shifting Standard in Patent Cases. - The standard for determining whether a patent claim is invalid for indefiniteness under 35 U.S.C. § 112(b). In Nautilius, Inc. v. Biosig Instruments, Inc., the Supreme Court held that a claim is invalid for indefiniteness under 35 U.S.C. § 112(b) if it fails to inform a skilled artisan with reasonable certainty of the invention's scope when read in light of the specification and prosecution history (134 S. Ct. 2120 (June 2, 2014)). For more on the court's new indefiniteness standard, see Legal Update, Supreme Court Rejects Federal Circuit's Insolubly Ambiguous Indefiniteness Standard.
- Liability for inducing patent infringement under 35 U.S.C. § 271(b). In Limelight Networks, Inc. v. Akamai Technologies, Inc., the Supreme Court held that liability for inducing patent infringement under 35 U.S.C. § 271(b) only arises if there is direct infringement under 35 U.S.C. § 271(a) (134 S. Ct. 2111 (June 2, 2014)). For more on the limitations on inducement under the court's opinion, see Legal Update, Supreme Court Rejects Federal Circuit's Liberal Induced Infringement Standard and Holds Inducement Requires Direct Infringement.
- Determining patent eligibility under 35 U.S.C. § 101. In Alice Corp. Pty. Ltd. v. CLS Bank International, the Supreme Court held that claims covering a computerized method of mitigating settlement risk were patent ineligible under 35 U.S.C. § 101 because they cover the abstract idea of intermediated settlement (134 S. Ct. 2347 (June 19, 2014)). For more on the court's decision and the analytical framework it applied to the facts of the case, see Legal Update, Supreme Court: Computerized Methods for Mitigating Settlement Risk Are Unpatentable Abstract Ideas. For a detailed analysis of the Alice case and its procedural history, see Practice Note, In Dispute: CLS Bank International v. Alice Corporation.
All IP practitioners need to be familiar with and understand the implications of the Supreme Court's decisions in these cases. Join Practical Law and Randy Lipsitz and Aaron Frankel of Kramer Levin Naftalis & Frankel LLP on Wednesday, July 30 at 1:00 p.m. Eastern Time for a free webinar that focuses on the key lessons from the Supreme Court's recent patent decisions. For more information, see the registration page.