On January 10, 2014 the Supreme Court granted certiorari in two patent cases, one copyright case, and a fourth case that may have implications for federal trademark law. The Court had already granted certiorari in at least five other IP-related cases set for argument in 2014. Needless to say, it will be a busy year for IP Law at the Supreme Court.
Cases addressing the proper standard for inducing patent infringement (Limelight Networks, Inc. v. Akamai Techs., Inc., No. 12-786), the standard for finding a patent invalid due to indefiniteness (Nautilus, Inc. v. Biosig Instruments, Inc., No. 13-369), whether streaming TV service Aereo “publicly performs” copyrighted works (American Broadcasting Companies, Inc. v. Aereo, Inc., No. 13-461), and whether the Food, Drug, and Cosmetics Act precludes certain claims under the Lanham Act (POM Wonderful LLC v. The Coca Cola Co., No. 12-761) join already-pending cases concerning the patent eligibility of certain software-related patent claims (Alice Corp. v. CLS Bank Int’l, No. 13-298), the burden of proof in a declaratory judgment action brought by a patent licensee (Medtronic, Inc. v. Boston Scientific Corp., No. 12-1128), the award of attorneys fees in patent cases (Highmark Inc. v. Allcare Management Sys., Inc., No. 12-1163 & Octane Fitness v. ICON Health and Fitness, No. 12-1184), and whether the defense of laches can apply to copyright claims brought within the statute of limitations proscribed by Congress (Petrella v. Metro-Goldwyn-Mayer, Inc., No. 12-1315).
While discussion of all the IP cases currently set for argument before the Supreme Court is beyond the scope of this post, below is a brief summary of the issues presented in the most recent cases granted certiorari.
Limelight v. Akamai
The Supreme Court will revisit the Federal Circuit’s 2012 en banc decision in Akamai Techs., Inc. v. Limelight Networks, Inc., where the Federal Circuit held that a party can be liable for inducing patent infringement even where multiple parties perform different steps of a claimed invention. Prior to the Federal Circuit’s ruling in Akamai it had been commonly understood that a finding of induced infringement required that either a single direct infringer perform every step of a claimed method, or that the inducing infringer otherwise exercised “direction or control” over an alleged direct infringer that did not perform all the steps itself.
Since computerized systems often involve steps performed by various parties, this case has gleaned the interest of the software and hardware industry—as demonstrated by the three separate amici briefs filed in support of petitioner Limelight, the accused infringer. Collectively, these amici briefs represented the interests of well-known technology companies and technology trade organizations, including: Google, Cisco Systems, Oracle, Red Hat, SAP, Symantec, Xilinx, Altera Corp., HTC, SmugMug, Weatherford International, the CTIA—The Wireless Association, the Consumer Electronics Association, and MetroPCS Wireless. The Supreme Court also invited a brief from the Solicitor General that was filed in December 2013 that also supported Limelight’s position.
While it’s unclear whether the Supreme Court will adopt or reject the Federal Circuit’s analysis in Akamai, the technology community eagerly awaits the Supreme Court’s guidance on this issue.
Nautilus v. Biosig Instruments
The Federal Circuit held that functional claim language lacking specific parameters in the specification is not “insolubly ambiguous,” and thus not invalid as indefinite, if the claimed invention provides “inherent parameters” sufficient for a skilled artisan to understand the bounds of the claims. According to the Federal Circuit’s decision, patent claims may not be indefinite even where some experimentation is required—as long as that experimentation is not “undue.”
This case has also garnered a lot of interest from the software community, with an amici brief filed in support of petitioner Nautilus by Amazon, Google, Limelight Networks, SAP America, NewEgg, NetApp, Garmin, SAS Institute, MediaFire, ESRI, J.C. Penney and another (also in support of petitioner) filed by non-profits Public Knowledge and the Electronic Frontier Foundation.
ABC v. Aereo
In April 2013, the Second Circuit affirmed a district court’s denial of a preliminary injunction against Aereo on the grounds that Aereo’s transmission of broadcast TV over the Internet (through antennas and servers provided by Aereo to individual subscribers) is not a “public performance” and thus can not infringe the public performance right under copyright law. The Supreme Court will now address this closely watched case with implications for the future of broadcast television over the Internet—as reflected in the eight amicus briefs filed in support of the broadcast networks by numerous media-affiliated entities.
POM Wonderful v. Coca Cola
While not itself a trademark case, the Ninth Circuit held that a private party could not bring a Lanham Act claim against a competitor over allegedly false or deceptive food product labels that were purportedly the purview of the federal Food, Drug and Cosmetics Act. POM Wonderful had accused Coca Cola of false or deceptive advertising in promoting various pomegranate juice blends that nonetheless complied with FDA regulations. The Supreme Court will now weigh in on the subject and the Court’s analysis could have broader implications concerning potential preclusion of the Lanham Act.
Upon the request of the Supreme Court, the United States filed a brief in support of denying certiorari, but nonetheless argued that that the Ninth Circuit erred by giving the Food, Drug and Cosmetics Act too broad a preclusive reach.