U.S. Supreme Court building
U.S. Supreme Court building ()

A rough year for the U.S. Court of Appeals for the Federal Circuit got rougher on Monday, when two more of its rulings were unanimously reversed by the U.S. Supreme Court.

The more stinging rebuke came in Limelight Networks v. Akamai Technologies, a decision addressing liability for inducing others to infringe a patent. The Supreme Court held that there can’t be induced infringement without a finding that some party directly infringed the patent.

“The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent,” Justice Samuel Alito wrote, referring to the appeals court’s en banc decision in Akamai two years ago.

In Nautilus v. Biosig Instruments, also a 9-0 ruling, the high court revisited the standard for proving that a patent is invalid on indefiniteness grounds. The Federal Circuit has written in recent decisions that a patent is indefinite only if it’s “insolubly ambiguous.” According to the Supreme Court, that phrasing doesn’t offer much guidance, “leaving courts at the patent bar at sea without a reliable compass.”

The correct inquiry, Justice Ruth Bader Ginsburg wrote on behalf of the court, is whether the patent “fails to inform, with reasonable certainty, those skilled in the art about the scope of the invention.”

The Supreme Court has now unanimously reversed the Federal Circuit in five straight patent cases, including in two decisions from April relating to which party bears the cost of legal fees (see our prior coverage here and here). P. Anthony Sammi, a patent litigator at Skadden, Arps, Slate, Meagher & Flom, pointed out that the five rulings were penned by four different justices. “Everyone is getting in on the action,” he said. (A sixth patent case, Alice v. CLS Bank International, has yet to be decided.)

The recent reversals will give Sharon Prost plenty to think about as she takes over as chief judge of the Federal Circuit. Randall Rader stepped down from that role last month, after it emerged that he’d sent a laudatory email to appellate advocate Edward Reines of Weil, Gotshal & Manges and encouraged Reines to show the email to others. Rader will remain on the court.

R. Polk Wagner of the University of Pennsylvania Law School told us he has some sympathy for the Federal Circuit. He conceded that the court’s decision in Akamai “inartful.” But he credited the court with trying to resolve what sort of joint activity constitutes infringement—a pressing question in this era of software patents, implicating both websites and Web users. The Supreme Court punted on that larger issue, Wagner said.

“They are reversing everything, but in some ways the basic rules are not being seriously disagreed with, and they aren’t engaging in their own analysis,” Wagner said. “The court is just peeling off these decisions and saying, ‘You did it wrong.’”

John Vandenberg of Klarquist Sparkman argued for Nautilus in April, squaring off against Proskauer Rose partner Mark Harris. Aaron Panner of Kellogg Huber Hansen Todd Evans & Figel argued for Limelight against Akamai counsel Seth Waxman of Wilmer Cutler Pickering Hale and Dorr.