Supreme Court Reversals in Patent Cases Reduce Risk of Patent Abuse: Professor Daryl Lim at Chicago’s John Marshall Law School

The Supreme Court recently overturned the Court of Appeals for the Federal Circuit in two unanimous decisions. These decisions make it harder for patent owners to pursue opportunistic litigation says intellectual property law Professor Daryl Lim of The John Marshall Law School in Chicago.

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(PRWEB) June 16, 2014

The Supreme Court recently overturned the Court of Appeals for the Federal Circuit in two unanimous decisions. These decisions make it harder for patent owners to pursue opportunistic litigation says intellectual property law Professor Daryl Lim of The John Marshall Law School in Chicago.

The U.S. Supreme Court recently reiterated the need for clear, concise language in patent applications and clarified the scope of patent infringement in two unanimous decisions, according to Professor Daryl Lim of The John Marshall Law School.

The number of meritless patent cases has been on the rise in recent years. “The court saw a problem and acted decisively to rein it in. It has raised the standards by which judges decide these cases,” noted Lim, who teaches intellectual property and antitrust law at John Marshall.“The new landscape is decisively more hostile to patent owners attempting to overreach.”

According to Lim, in the first case, the court ruled that a company was not liable for inducing its customers to infringe on another company’s patent.

In Limelight Networks, Inc. v. Akamai Technologies, Inc. (No. 12-786), Akamai owns a patent for a method of delivering electronic data, used to transmit videos and other content over the Internet. Limelight operates a delivery system that carries out several of the steps claimed in Akamai’s patent. When Limelight customers use its product, they perform one of the steps claimed in the patent, known as “tagging.”

Akamai accused rival Limelight of infringing on the patent. Writing for the court, Justice Samuel Alito, Jr. rejected Akamai’s claim.

Alito wrote that “[i]f the defendant does not perform every step claimed by the patent owner, there is no infringement.” Alito also wrote that Congress could impose liability for inducing activity if it wanted to do so.

“The case is important because the issue arises frequently in sectors such as banking, telecommunications and interactive media, where a service provider requires input from its customers,” noted Lim. “The life sciences industry also has a significant stake in the issue, such as when a lab conducts a test and doctors use the results in treating their patients.”

Lim predicts that the Limelight decision will encourage more careful drafting and prosecution by patent attorneys. “There will need to be a clear understanding of the relationships among the various actors and what they are likely to do,” he said.

In Nautilus, Inc. v. Biosig Instruments, Inc. (No. 13-369), the Supreme Court held that valid patents must describe the essential elements of the invention and clearly describe how it can be used so that a person skilled in the field could understand it with “reasonable certainty.” The case concerned a patent claim to a heart rate monitor typically used in exercise bikes, stair climbers and treadmills. Biosig was the assignee of the patent, and sued rival Nautilus for patent infringement. Writing for the court, Justice Ruth Bader Ginsburg warned that merely requiring a court to ascribe some meaning to a patent’s claims lacked precision, leaving stakeholders “at sea without a reliable compass.”

“Businesses are frustrated at the widespread practice of intentionally vague patent claims, which prevent them from determining a patent’s scope until only after the litigation,” Lim said. “Too often, there is insufficient information for them to determine whether to obtain a license.”

“Some ambiguity may be tolerable, but indefiniteness is not,” he added. “Claims, read together with the patent specification and its prosecution history, must be sufficient to provide that clarity.”

Daryl Lim is a law professor at The John Marshall Law School in Chicago. He specializes in intellectual property and antitrust law.


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    The John Marshall Law School

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