Judicial Error and Justice Alito’s Hypothetical in Limelight

By Jason Rantanen

As I read yesterday’s two Supreme Court opinions, I was struck by the sense that even as it grants certiorari on an extraordinary number of patent cases, the Court’s actual substantive engagement with patent law seems to be flagging.   None of its patent law opinions this term were more than 14 pages long; the shortest was 5, although Alice could be a beast.  These are well off from its opinions in KSR v. Teleflex, which came it at a more significant 24 pages.  And a quick scatterplot of majority opinion page length in patent cases since MedImmune shows a steep downward slope.

Even if opinion length really is meaningless in terms of opinion value (may be behind a paywall), however, the substantive content of these opinions is disappointing.  In Nautilus, for example, the Court held that the requirement for definiteness is something greater than what the Federal Circuit’s “insolubly ambiguous” standard, but offered no meaningful explanation of its “reasonable certainty” standard.

But the worst (best?) example of the Court’s present cursory approach to patent law issues is Justice Alito’s assertion in Limelight that the “Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent.”  But as Dennis observed yesterday, the full quotation shows that there is also either a substantial misunderstanding or sheer carelessness by the Court:

The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent.  A method patent claims a number of steps; under this Court’s case law, the patent is not infringed unless all the steps are carried out. This principle follows ineluctably from what a patent is: the conferral of rights in a particular claimed set of elements. “Each element contained in a patent claim is deemed material to defining the scope of the patented invention,” Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U. S. 17, 29 (1997), and a patentee’s rights extend only to the claimed combination of elements, and no further.

The Federal Circuit’s contrary view would deprive §271(b) of ascertainable standards. If a defendant can be held liable under §271(b) for inducing conduct that does not constitute infringement, then how can a court assess when a patent holder’s rights have been invaded? What if a defendant pays another to perform just one step of a 12 step process, and no one performs the other steps, but that one step can be viewed as the most important step in the process? In that case the defendant has not encouraged infringement, but no principled reason prevents him from being held liable for inducement under the Federal Circuit’s reasoning, which permits inducement liability when fewer than all of a method’s steps have been performed within the meaning of the patent.

With such a profound buildup, one would expect the majority judges in Limelight to have erred greatly by allowing inducement as long as “the most important step in the process” was performed by someone.  Yet they said no such thing.  From the en banc majority opinion in Akamai v. Limelight:

 To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.

692 F.3d 1301, 1306 (Fed. Cir. 2012) (en banc).  Variations on this theme are repeated throughout the majority’s opinion, and the issue of whether or not all the steps must be actually performed was never in dispute.

Justice Alito’s sharp criticism is particularly inapposite here, given the difficulty of this particular issue and the meagre analysis that is provided in the opinion.  To be clear, I agree that inducement under 271(b) should require that there be a direct infringer under 271(a).  My point is simply that execution of this opinion could have been much better, and in treating the issue so clumsily the Court reinforced the appearance of just going through the motions.

So “What if a defendant pays another to perform just one step of a 12 step process, and no one performs the other steps, but that one step can be viewed as the most important step in the process?”  Easy answer under all Federal Circuit precedent: no infringement under 271(a), (b), or (c).

What happens next?  Perhaps this will be an instance where the Court engages in post-issuance revision of its opinion, as discussed in Richard Lazarus’s recent study of The (Non)Finality of Supreme Court Opinions and highlighted in Adam Liptak’s NYT article (may be behind a paywall).  If it does so, I would hope that the Court follows Professor Lazarus’s recommendation that it amend its practices to provide meaningful public notice.  But regardless of whether such post-issuance editing takes place here, the Supreme Court’s fumble suggests that for all its apparent interest in patent cases, maybe it isn’t really paying all that much attention to what the Federal Circuit is actually saying.

101 thoughts on “Judicial Error and Justice Alito’s Hypothetical in Limelight

  1. “but no principled reason prevents him from being held liable for inducement under the Federal Circuit’s reasoning, which permits inducement liability when fewer than all of a method’s steps have been performed within the meaning of the patent”

    It sounds to me that Alito (and the other 8) disagree with the Fed. Cir.’s flawed reasoning.

    In other words, Alito is saying that under the Fed. Cir.’s reasoning, one person could be held liable for the most important step (even if they claim otherwise). There’s no reason to even have to prove the other steps were taken (by someone).

    SC is adopting the single actor / director theory –
    “There has simply been no infringement of the method in which respondents have staked out an interest, because the performance of all the
    patent’s steps is not *attributable* to any one person.”

    The only thing Fed. Cir. could do is relax the rule for what “attributable” means.

    If Akamai had hammered on 271(a) for that, we could have a different result.

    1. There’s no reason to even have to prove the other steps were taken (by someone).

      Are we not there (in a way) already with “offer to sell?”

      A mere offer need not include any steps or even possession of the item (if sellign an item).

  2. I don’t find any problem with the opinion.

    “What if a defendant pays another to perform just one step of a 12 step process, and no one performs the other steps, but that one step can be viewed as the most important step in the process?” – SC

    That would not be infringement, everyone agrees. Yet state the same fact another way and the Fed Cir gets confused:

    “There has simply been no infringement of the method in which respondents have staked out an interest, because the performance of all the
    patent’s steps is not attributable to any one person.
    ” – SC

    Contrast with: “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.” – Fed Cir

    Yet in either case, a limitation has not been performed, and the claim is not infringed. Performance by another, without attribution back to someone who has performed the rest of the steps, is no different from lack of performance altogether.

    Alito was EXTREMELY clear in pushing back on that statement. It IS necessary to prove that all the steps were committed by a single entity. Maybe this is not clear for those who have little experience in agency law, but when an agent does something on behalf of and within the scope of his agency, it binds the principal. It is legally the principal doing the action. Thus it is possible to have different actors, yet the same entity. The Federal Circuit goes further, and says that different entities suffice.

    The court distinguished Muniauction, wherein the Federal Circuit defined what constituted a single person acting, with here, where the Federal Circuit admitted it wasn’t a single person acting, but then went on to find liability anyway.

    This is not a pointless distinction, as some posters (and perhaps the writer of this article) seem to think: Under the Supreme’s statement, an agent is never liable unless he performs all of steps, but under the Fed Cir’s viewpoint, the agent would be liable because he engaged in a conspiracy to violate the patent – he was part of a combination that met the entirety of the method.

    If a method requires steps a, b, c, d and four people each independently perform one of the steps while working together for a common goal, there is no infringement. But as soon as one of them directs the others to perform the steps, there is infringement. Could the Muniauction standard be changed so that four people working together without direction be liable (i.e. might the common cause be enough)? Possibly. That was not under review.

    What is clearly not a valid rule? Any rule which would allow liability for a single person not performing each and every one the steps. Otherwise known as basic patent law. Who failed basic patent law? The federal circuit.

    1. RG under the Fed Cir’s viewpoint, the agent would be liable because he engaged in a conspiracy to violate the patent – he was part of a combination that met the entirety of the method.

      Question: in your view, RG, what happens if the agent was engaged in an bona fide conspiracy to violate the patent? e.g., Bob and Joe, who happen to live in the same apartment building, agree to separately carry out step 1 and step 2 of a two-step process patent, then sell the (unpatentable) product, then split the proceeds. Who, if anybody, is liable for infringement of the patent? Does the answer change if Bob and Joe are married?

    2. Random, I think the court was clear that there must be someone liable for direct infringement. I don’t think they went beyond that. Where do you get the idea that they already decided the single-actor rule in dicta?

      1. Where do you get the idea that they already decided the single-actor rule in dicta?

        I think the phrase used was “assumed without deciding”

    3. Actually Random, I think you did misunderstand what the Supreme Court was saying. I will give you the complete quote that you partially quoted with bolding,

      “Assuming without deciding that the Federal Circuit’s holding in Muniauction is correct, there has simply been no infringement of the method in which respondents have staked out an interest, because the performance of all the patent’s steps is not attributable to any one person.”

      And then your conclusion,

      “Alito was EXTREMELY clear in pushing back on that statement. It IS necessary to prove that all the steps were committed by a single entity.”

      I think, Random, that he said that with the assumption that Muniauction was correct.

      You now need to review Quanta. There the Court seemed to suggest that the partial practice of a patented method could be liable if the partial product produced embodies all the essential features and it is sold knowing that the final, but conventional step would be done to complete the product. I am quite sure that the court would approve a finding of direct infringement by the finisher such that the seller would be liable for contributory or inducement infringement.

      1. I am quite sure that the court would approve a finding of direct infringement by the finisher

        Not so.

        See Univis Lens – there can be NO infringement on an item ALREADY exhausted.

        The “last step is the direct infringer” theory is set back by these cases Ned – the opposite of how you would use them.

        1. I am sorry, anon, but you keep reading into the facts we are discussing here a fact not in evidence — the authorized sale by the patentee or his licensee. Cut that out.

          Absent the authorized sale, the sale of the partially completed product was assumed to infringe.

          Get it?

          Now how in the world could that be if the finishing step practiced on the partially completed product was not a direct infringement?

          1. Not reading anything “into” the situation Ned.

            Maybe you need to re-read the Univis Lens case again (and not stop and parse out the particular view that you think fits your agenda).

            You are the one forcing a reading that was not there.

          2. Question: How in the world can ANY step be infringement on an exhausted item?

            Answer: An exhausted item cannot be infringed. Period. Do whatever step you want to do.

            1. Ned,

              I am inserting no assumption – it is you that is inserting assumptions.

              You need to re-read Univis Lens and try to not to insert your assumptions.

  3. Ned: the problem here was created by the Federal Circuit in its “single-actor” rule for direct infringement that seems based in turn on a misreading of “whoever” in 271(a) to expressly exclude multiple actors when, as Newman noted, the statutory definition of “whoever” means “one or more.”

    The problem here was created (1) by the statute which is a piece of gxrbxge along with nearly every one of the important sections of the original 1952 patent act; and (2) by greedy patent applicants trying to claim ineligible inventions to protect transactions between multiple parties instead of new technologies (the latter being the sort of progress that actually requires somebody to do make something new).

    The first problem with 271(a) is that if you read it in a vacuum as if you were born yesterday, it doesn’t fit well with method claims, which are “practiced” (a term not found in 271(a)) rather than “used” (the Federal Circuit has addressed this defect already).

    The second problem is that if you read it in a vacuum as if you were born yesterday, it appears to create joint liability for individuals who, without any knowledge of each other’s activities and without any control or direction of their actions a third party, are practicing the separate steps of a claimed invention. And that’s absolutely absurd.

    Why is that absurd? Easy. For starters, we know that infringement and anticipation are related. If 271(a) is read that broadly then method claims are anticipated whenever the individual steps are found separately in the prior art. Consider the case where each step in a pending method claim is old and being practiced separately (and legally) by separate individuals. Are we to believe that these lawfully acting individuals suddenly become jointly liable for patent infringement when that method claim is granted? For doing nothing but what they were lawfully doing years prior to the filing of the patent? That’s the absurdity (or more accurately, the travesty) of reading 271(a) that broadly.

    For direct infringement by multiple actors carrying out separate steps of a claimed method, the activity of those actors must be concerted. Either (i) it’s concerted by agreement between the actors performing the steps, in which case the actors are each jointly liable for the direct infringement, or (ii) the actors are being directed/controlled by one of more entities who are directly liable (e.g., an employer), or (iii) a combination of (i) and (ii).

    271(b) was enacted to deal with contributory infringement and there isn’t necessarily a fatal conflict between the interpretation of 271(a) above and 271(b). 271(b) says Whoever actively induces infringement of a patent shall be liable as an infringer and stands for the proposition that if someone is aware of a patent and intentionally causes the acts in 271(a) to be performed (e.g., by contracting a company to perform the steps) then they are liable for infringement.

    It can’t be repeated enough by me or the courts: applicants need to learn how to draft better claims, and the people who consider themselves “innovators” need to come to terms with the fact that every idea they come up with is not worthy of patent protection, for any number of very good reasons. The softie wofties need to grow up and stop begging the courts to break the system so it includes all their greedy little ownership and control fantasies. It really isn’t all about them. And, yes, I know it hurts their entitled fee-fees to hear that.

    1. anon, will you stop it with MM. He will ably defend his position if asked politely. His post at 14 is an excellent post.

      MM, if a person is selling a old element of a combination, or practicing an old step of a patented method, then certainly he should not be liable for infringement — without more. But take the lens finishers in Univis as one example of a real case. They purchased partially completed lens blanks from vendors.

      The Supreme Court seemed to be of the view that these lens finishers were would be liable for direct infringement but for the license involved eve though all that finishers were doing were only conventional steps that finishes and always done. The problem was they were operating on lens blanks that had the novel features in them. This made them direct infringers.

      The problem with the Federal Circuit position on direct infringement after BMC Resources is that the finishers in Univis lens would not be direct infringers because they did not perform all the elements of the claim. I do not think the Federal Circuit would hold after the Limelight remand that there was no direct infringement if they were given the facts of the Univis lens case for a decision today.

      Regarding business method patents and the like, undermining the law of direct infringement so that business method patents are not practically enforceable is not really the way to go. We really made to take care and not throw the baby out with the bathwater.

      1. Ned, with all due respect, I can’t follow your argument about “the problem with the Federal Circuit position on direct infringement after BMC” because I’m not as familiar with the method claims in Univis Lens and the relationship between the parties who are practicing the various steps of the methods in question.

        Either the statutes need to be re-written because they are nonsensical and internally contradictory or they need to be interpreted in a rational way that avoids the creation of liability for people who are not practicing all the steps of the method or who are not fully engaged in a concerted effort to practice all the steps of the method with the assistance of others.

        As for this:

        undermining the law of direct infringement so that business method patents are not practically enforceable is not really the way to go.

        It’s one way to minimize the impact and value of so-called “business method patents”, which really do not belong in the patent system in the first place. (note: I’m referring to patents on methods of “doing business” per se, not methods which result in new physical, non-monetary transformations and not methods which incorporate novel, non-obvious machines which are properly described by their new structures).

        We really made to take care and not throw the baby out with the bathwater.

        I’m not sure why that’s the case with respect to so-called “business method” patents. Either throw them out with the bathwater or poach them in the tub with boiling 101. [shrugs]

        1. Consider Quanta Computer, Inc. v. LG Electronics, Inc., 128 S. Ct. 2109, 553 U.S. 617, 170 L. Ed. 2d 996 (2008). The case involved method patents.

          Consider a method patent having steps A, B and C that together produce product D. C is a conventional step long practiced in the art as in the discussed Univis Lens case. The whole of the inventive steps are in steps A and B. However, step C is essential to complete product D.

          Univis held the authorized sale of partially completed products exhausted the patent, and assumed that the sale of such products would infringe if not authorized.

          “…Univis held that the sale of optical lens blanks that partially practiced a patent exhausted the method patents that were not completely practiced until the blanks were ground into lenses. 316 U.S., at 248-251, 62 S.Ct. 1088.”

          In Quanta, the defendant said that Univis did not apply to method patents. The Quanta court held otherwise:

          “These cases rest on solid footing. Eliminating exhaustion for method patents would seriously undermine the exhaustion doctrine. Patentees seeking to avoid patent exhaustion could simply draft their patent claims to describe a method rather than an apparatus.[5] Apparatus and method 2118*2118 claims “may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus.” United States ex rel. Steinmetz v. Allen, 192 U.S. 543, 559, 24 S.Ct. 416, 48 L.Ed. 555 (1904). By characterizing their claims as method instead of apparatus claims, or including a method claim for the machine’s patented method of performing its task, a patent drafter could shield practically any patented item from exhaustion.”

          The only reasonable conclusion is that the sale of partially completed products embodying all the essential features of the patent is an infringement, and if done by the patent holder, exhausts the patent in those items — and it makes not one bit difference whether the patent is a method patent or a product patent.

          1. The only reasonable conclusion is that the sale of partially completed products embodying all the essential features of the patent is an infringement, and if done by the patent holder, exhausts the patent in those items — and it makes not one bit difference whether the patent is a method patent or a product patent.

            LOL

            Three things come to mind.

            1) this does not come close to capturing the offense of “offer to sell.”
            2) you seem to come close (and yet still not grasp) the meaning of Univis Lens (in which the final step was immaterial) and incorporate that case into your “final step” paradigm.
            3) “Apparatus and method claims “may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus.’” – LOL – check with Malcolm, as he has trouble even understanding what this means.

            1. We’re not talking about exhaustion here. We’re talking about infringement.

              Exhaustion and infringement are different, Ned. Different issues present themselves. There’s nothing so special about the dicta or holding in Univis Lens that prevents it from being modified if necessary. The world doesn’t revolve around that decision, I can assure you.

              As for this:

              “Apparatus and method claims “may approach each other so nearly that it will be difficult to distinguish the process from the function of the apparatus.’”

              That may be. Nevertheless, method and compositions claims are still fundamentally different. You can claim every possible use of an unpatentable machine but I can still sell you that machine without infringing your method patent. How could it possibly be otherwise?

            1. Assume, the hypo method has steps A, B and C to produce D. C is necessary, but old, and performed by, let us say, doctors or nurses across the land.

              Alleged infringer performs A and B to produce D’. D is sold to doctors, nurses, etc., who perform C to produce D.

              Will the Federal Circuit find direct infringement here by anybody?

            2. Do you think on remand the Feds will relax Muniauction?

              I think there is a very good chance of that. Alternatively, they could leave Muniauction more or less where it stands and let Congress write a better statute.

              So what if a few patentees need to hold onto their shorts for a while. They’ll be just fine. Remember: these aren’t poor, ordinary people we’re talking about. Primarily these are softie wofties trying to grift off the system that they fouled up with their jxnky claims and greed.

        2. I’m not sure why that’s the case with respect to so-called “business method” patents.

          The RQ/HD strikes again – who cares what the law actually provides…

        3. because I’m not as familiar with the method claims in Univis Lens and the relationship between the parties who are practicing the various steps of the methods in question.

          Translation: “because I do not want to open my eyes.”

          Reminds me of Ned and the Nazomi case….

      2. He will ably defend his position if asked politely

        False.

        Completely and utterly. I have asked him on many time sand in many ways to defend his positions related to anti-patent agendas that he carries.

        Nothing off of his short script of AOOTWMD, ad hominem, mischaracterizations and omissions of material fact, material law and of what others post has ever come from Malcolm.

        I have told you (and him) how to get a “polite” treatment: post with intellectual honesty.

        That ball already is in Malcolm’s court. It is his move Ned, not mine.

    1. The clothiers of the Royal Nine bask in the waves of adulation from the crowd.

      (except that pesky child who continues to ask why the King is naked)

      1. Not sure of the point that you are trying to make Malcolm.

        Perhaps it would be better for you to speak plainly and attempt to add something of substance from your own self.

        1. Not sure of the point that you are trying to make Malcolm.

          My point is that you are so much in love with your own weirdaxx “rhetoric” (for lack of a better term) that the acid casualties in the parking lot of the AC/DC concert appear ten times as lucid by comparison.

  4. Ya know when you’re putting together a set of shelves, and you can’t get slot A to fit easily on protrusion B. And then your friend shows up, mashes the two parts together, says “See, that’s how it’s done,” and leaves; at which time you realize he’s destroyed protrusions E and G, while installing the parts upside down and backwards???

    That’s the Fed. Cir. and the S. Ct. In recent history, I don’t think the S. Ct. has ever come up with a better, more clear, more definitive standard on anything in Patent Law.

  5. Jason,

    That Our Judicial Mount Olympus overruled the Federal Circuit majority in Limelight Networks v. Akamai Technologies isn’t surprising. But as you have astutely observed, Alito’s reasoning for the holding is abysmal. One statement by Alito in Limelight Networks is particularly problematical to me with respect to the impact of 35 USC 271(f)(1): “As this provision illustrates, when Congress wishes to impose liability for inducing activity that does not constitute direct infringement, it knows precisely how to do so.” That’s true, but what Alito and Our Judicial Mount Olympus won’t acknowledge is that Congress did “precisely” that with 35 USC 271(f)(1), as well as with 35 USC 271(f)(2) in overturning the two different aspects of SCOTUS’ Deepsouth Packing holding: (1) US patent laws do not apply extraterritorially (SCOTUS refused to acknowledge that impact of 35 USC 271(f) in its Microsoft v. AT&T decision); and (2) that infringement liability must always be predicated on one instance of direct/complete infringement by one entity (something the Federal Circuit correctly noted Congress had done away in 35 USC 271(f) with its 2001 Waymark decision). Besides glossing over what “whoever” means in 35 USC 271(a) (I’m sure Judge Newman will have convulsions over that faux pas given her concurring/dissenting opinion in the Federal Circuit’s en banc decision), Alito’s opinion fails to acknowledge that Congress also did away with the direct/complete infringement aspect of Deepsouth Packing even in 35 USC 271(a) which was amended to create infringement liability for an “offer for sale” (which requires no complete practice of the claimed invention at all, merely an “offer for sale” of the claimed invention). Essentially, Our Judicial Mount Olympus in Limelight Networks (again) refuses to accept that Congress has spoken on its Deepsouth Packing holding, and has rejected both aspects of that holding.

    1. EG, you are making a good point here that Congress can intervene after the SC has spoken. But the problem here was created by the Federal Circuit in its “single-actor” rule for direct infringement that seems based in turn on a misreading of “whoever” in 271(a) to expressly exclude multiple actors when, as Newman noted, the statutory definition of “whoever” means “one or more.”

      I would expect the Federal Circuit to fix this problem by reversing BMC Resources and its progeny on remand. If not they, then the Supreme Court after taking that case up for review. And if not the Supreme Court, then perhaps we need a congressional fix.

      1. (sigh)

        Ned, once again your fealty to the Royal Nine appears to make you think that the Kings’ raiments are splendid indeed.

        As EG points out, the SC has been rebuked by Congress, and the SC refuses to understand.

        We have a certain branch of the government so “high and mighty” that they ignore any sense of checks and balances.

        Out.
        Of.
        Control.

          1. So when are you going to start the impeachment proceedings? Because it’s pretty clear that the Supremes really don’t give a hoot about what you think.

  6. On point comments – albeit sharp – under “consideration” for accurately assessing how certain posters behave on these boards….

    C’est la vie.

  7. I propose a different explanation why SCOTUS continues to take patent cases, despite issuing thinly reasoned and vague guidance upon reversing the Federal Circuit. It has nothing, or almost nothing, to do with patent law per se. Rather, such cases offer an easy way for the Court to appear unified despite the deep political differences among the Justices. By issuing unanimous, or nearly unanimous, opinions in patent cases the Court can easily and without rancor increase the percentage of decisions that do not reliably split along conservative versus liberal lines.

  8. Both the unusual number of, and the indicated abruptness of, Sup. Ct. reversals of the Fed. Cir. this year seem most likely explainable by an increasing impatience with Fed. Cir. handling of patent law issues, and Justices perceptions of the quality of some patent claims they see on appeal [too often before there has been any 103 evaluation thereof]. That does note bode well for respecting other future Fed. Cir. pro-patent-owner statutory interpretations.

    1. “That does note bode well for respecting other future Fed. Cir. pro-patent-owner statutory interpretations.”

      Huzzah? Can I get a he ll yeh?

  9. Thanks for the excellent post, Jason, and also excellent point IMO Les. Possibly the Federal Circuit (or more to the point, the attorneys) could have discussed examples like you mention where parties are making an ‘end run’ around infringement because of the old rule? Wasn’t that the idea behind the statutory change in [Shrimp Packing; sorry can't remember the name off the top of my head] that parties were circumventing infringement by performing one step overseas?? Fortunately in that instance somebody recognized that what was going on was counter to the public interest and acted to correct it. Ideally, the same kind of correction would happen here.

    1. Deep South concerned a patent on a shrimp de-deveining machine — an apparatus claim (not a method claim). The defendant was manufacturing parts in the US to make the machine and exporting those parts overseas where the patentee did not have a patent. The Supreme Court said that was not infringement of the apparatus patent.

      Congress responded by creating 271(f) which created liability for that kind of activity (i.e., selling components overseas where those components have no substantial use other than the manufacture of the infringing product).

      Method claims present completely different issues because method claims are very different from composition claims therefore the policy concerns are also very different (at least that used to be the case before the Federal Circuit created some awful patentee-coddling case law that, to my knowledge, has not yet been directly challenged … but hopefully will be in due course).

      1. Method claims present completely different issues because method claims are very different from composition claims therefore the policy concerns are also very different

        Circle logic much?

        1. There’s nothing circular about it. Different issues presented by different claims present different policy concerns. Is that really so hard to understand?

          Instead of “composition versus method” claims, substitute “synthetic drug claims versus method of organizing your thought claims” and read the sentence again. Does that help you follow along? Golly, I hope so. But I’m not betting on it.

          1. You begin with the end concluded – that different issues must mean different policies.

            You seemingly neglect that adage from the Court that the particular category is really not all that decisive, that “scriviners” can lay out the invention easily in multiple categories.

            1. Lol, anon, of course there’s nothing circular about the “logic”- method claims are different because, because, because . . . they’re not the same!!!

            2. method claims are different because, because, because . . . they’re not the same!!!

              Are you suggesting that method and compositions claims are not different?

              If so, the mental ward awaits you.

    2. Coaxial,

      See my comment above. That Our Judicial Mount Olympus continues to cling to its Deepsouth Packing albatross, in spite of the fact that it was a 5-4 decision (a bare majority, with a vociferous dissenting opinion), as well as Congress, through 35 USC 271(f), rejecting both aspects of the Deepsouth Packing holding (see also my comment above), doesn’t reflect well on them.

  10. I think the good justice’s point was simply that there was no principled reason to deny a finding of infringement in his scenario if one were to allow the federal circuit’s rule to survive. And I have to say I somewhat agree with him there. The whole “well well well but but but the whole method was performed somewhere, by diverse actors” argument rings hollow with me.

    1. This seems to be exactly what Alito meant. If you take away the requirement that a defendant must be “responsible” for all of the steps being performed, then there’s no logical reason to stop there. If the defendant need not be legally liable (whether vicariously or otherwise) for some hypothetical direct infringement, you’ve essentially done away with the requirement altogether.

      1. And, importantly, direct infringement does not require all the steps be performed by one person, just that one person at least be legally liable.

        This formula presupposes that others can perform less than all the steps and not be liable, so long as someone else is liable because he practiced all the steps, or practiced one, but is responsible for or takes advantage of the other steps.

  11. An idea I’ve been kicking around to address this clearly unfair “infringement is taking place … yet no one is solely infringing” conundrum:

    Would including the following verbiage at the end of a method claim –possible via a dependent claim — protect an inventor from such “multiple-player” infringers?:

    “(The method of claim 1,) wherein not all of the steps are performed by the same entity.”

    Any authority(ies) in support or against such an approach?

    1. Interesting thought Steve. Maybe too it would add to the invention for the steps to be carried out by different actors. Might be more economical for example to carry out some method steps in India.

    2. Steve:

      Would including the following verbiage at the end of a method claim –possible via a dependent claim — protect an inventor from such “multiple-player” infringers?:

      “(The method of claim 1,) wherein not all of the steps are performed by the same entity.”

      You’re completely missing the point. First, certain types of “multiple actor” infringement are already protected according to the Federal Circuit’s own case law following Muniauction. Muniauction didn’t destroy liability, for example, for companies with employees who carry out the steps of the claim separately.

      Learn how to write claims that are infringed by single actors and you’ll be in good shape. Better yet, try to find clients with real inventions that are worthy of patent protection in the first place so you don’t need to play these lawyer games.

      Second, you realize that by trying to expand liability to include completely independent actors separately practicing discrete steps of the claim you are also expanding the prior art.

      Third, if you insist on this kind of game playing, why not go all the way and patent “A country, wherein somewhere one or more people are performing the following acts, either independently or in a coordinated fashion: act 1, act 2, act 3, and act 4.” Then you can sue the whole country when you find four people doing those things! You’ll be super famous.

      Or you could just figure out which of those acts is actually inventive (alone or in combination) and claim it like normal grown-up patent attorneys have done for a long time.

      1. ““A country, wherein somewhere one or more people are performing the following acts, either independently or in a coordinated fashion: act 1, act 2, act 3, and act 4.” Then you can sue the whole country when you find four people doing those things! You’ll be super famous.”

        Not sure if countries are eligible. Plus you appear to be distinguishing your country claim (composition claim?) in terms of method steps. Idk about that brosef. Outside the computer arts I’ve had ridiculously good success rejecting and having those sorts of claims amended, cancelled or abandoned.

        1. Not sure if countries are eligible.

          They are created under the sun by man! Your desk can be inside one!

          you appear to be distinguishing your country claim (composition claim?) in terms of method steps

          A map is not the same as a proton!!!!!!

      2. To equate “grown up” with old style innovation is to show your AOOTWMD with your “gramps” comments.

        Even Lemley pushed hard in the AIA to make it a point that inventions have changed to “Team Inventors.” If inventors are teams, there is NO logical reason to expect infringers to continue to be individual infringers.

        Talk about needing to grow up…

      3. MM — your comment start’s out fine … but then you once again unnecessarily and unprofessionally slide into the gutter …

        I understand that certain types of “multiple actor” infringements are already protected, I know how to write single-actor claims, and I realize that this approach expands the prior art. That’s not what I’m asking.

        What I’d like to know is whether there’s any authoritative reason why a claim with such a “wherein” clause wouldn’t be patent eligible … so that ALL “multiple actor” infringements could be protected.

        If it is, then it’s one more legitimate tool in everyone’s tool box to help counsel and their clients … and perhaps especially so in the reexam and reissue contexts.

        Since you haven’t provided any authority(ies) against such an approach, shall we assume that you don’t have any?

        And why would you denigrate something that could help your own clients protect their inventions?

        Where’s the game playing in that?

        1. Steve,

          And why would you denigrate something that could help your own clients protect their inventions?

          You must be new around here and do not understand that Malcolm really does not enjoy the profession that he (supposedly) is in and certainly does not believe in the work product that he (supposedly) produces.

          He certainly does not act like an attorney with his habitual dissembling and misrepresentations of material law, facts and what others post on this modern social media advocacy forum.

        2. What I’d like to know is whether there’s any authoritative reason why a claim with such a “wherein” clause wouldn’t be patent eligible

          Authoritative reason? Oh, you mean a case that smacked down some lawyer’s lame attempt to create some kind of “express” liability for infringement of a method claim where (1) no person is carrying out all the steps themselves and (2) nobody is controlling any of the other actors and (3) none of the actors are aware of what the other actors are doing.

          I’m not aware of any such case. I am 100% sure that your brilliant plan will fail to achieve the goal you seek (i.e., a non-worthless claim) and I explained to you why that is the case. But go ahead and take your client’s money, blow some sunshine up their butts, and knock yourself out with your “wherein” clause. You won’t be the first patent agent to engage in malpractice and get away with it because the client is too dumb to get a second opinion. And you won’t be the last.

          My advice again: learn how to write patent claims and try to find some clients with inventions worthy of patenting. The world has enough grifters, Steve.

          Oh, and just in case you want to pursue your “strategy” further, though, you might as well just put in your claim a “limitation” that the claim is eligible, non-obvious, definite and enabled. I don’t know of any “authority” that says you can’t do that so why not throw the hail mary for your precious client? That’s the “professional” thing to do, isn’t it, Steve? Super “zealous” and impressive stuff.

          1. Given the often-shifting patent landscape; including what constitutes eligibility, patentability, infringement, and liability; it is both prudent and wise to be as creative as possible when it comes to claiming.

            As we’ve seem time and time again over the years, what works yesterday doesn’t work today. So what works today may not work tomorrow.

            Sadly for your clients; presuming you actually have any given that your workplace seems to be here on PatentlyO; this is something you either don’t understand, or even worse, choose to ignore.

            Thankfully for you, though, because they don’t know what they don’t know … they don’t know what they’re missing.

            And I’m a client; not an agent or attorney.

            1. I’m a client; not an agent or attorney.

              That explains a lot. I’m sure your attorney loves you very much, Steve.

              Take what I wrote to your attorney and ask him to explain it to you further if you still don’t understand.

              what works yesterday doesn’t work today. So what works today may not work tomorrow.

              Right. And that’s especially true with “clever” (<-dxmb) attempts to get around fundamental truths about the way the system works. So why would you waste your money, Steve?

              You try to sue me and some other unrelated guy for "infringing" your method claim and you'll be paying for our fees. I guarantee you that.

              Get a life. Grow up.

            2. Given the often-shifting patent landscape; including what constitutes eligibility, patentability, infringement, and liability; it is both prudent and wise to be as creative as possible when it comes to claiming. … And I’m a client; not an agent or attorney.

              Steve – Maybe (although I doubt it), but it’s even more prudent and wise to have a knowledgeable, experienced attorney write your claims for you. You’ve already had one tell you why your proposed solution won’t work, but I’ll just rephrase his advice a little: you can’t rewrite the law of infringement by asserting (in your claims or elsewhere) that the law doesn’t apply to your claims. That’s (at best) all that your proposed solution does.

      4. Learn how to write claims that are infringed by single actors and you’ll be in good shape. Better yet, try to find clients with real inventions that are worthy of patent protection in the first place so you don’t need to play these lawyer games.

        As you say Malcolm, you miss the point.

        Your focus on “attorney” reveals more of that self-loathing thing you have got going on, an your comments about ‘real inventions’ somehow incorrectly constrains inventions only to a subset of real inventions. Sure the Muniauction case needs to be revisited (as I suggested in previous threads), but the rest of your post adds, well, nothing of substance or merit.

      5. Second, you realize that by trying to expand liability to include completely independent actors separately practicing discrete steps of the claim you are also expanding the prior art.

        That’s an interesting idea, but I’m not sure it’s correct. I’m not aware of any rule that says that the prior art for methods is restricted to practice of the steps by a single actor (or joint enterprise).

        1. I’m not talking about a “joint enterprise”, Dan. As already noted, there is no doubt that literal multiple people can infringe a patent claim when they are acting in concert and/or directed to do so (e.g., by an employer).

          I’m talking about separate people individually performing separate steps of a method claim without any knowledge of what the other people are doing and under nobody’s direction. That’s not “infringement.” There is no liability for any of those people and there never will be.

          This is important to understand.

          1. I’m not talking about a “joint enterprise”, Dan.

            Neither am I; I was just responding to your suggestion that any of this could have some impact on the prior art that might come to bear. But I see now that you were responding to a (misguided) suggestion that one could rewrite the law of infringement through “clever” drafting, so this sub-thread is already so far off the rails that there’s not much point.

    3. Steve: An idea I’ve been kicking around to address this clearly unfair “infringement is taking place … yet no one is solely infringing” conundrum:

      When disparate actors independently carry out separate steps of a method claim without the knowledge of the actions of the others or coordination with the other actors, there is no “infringement” of the patent claim. None of the actors are liable.

      There is absolutely nothing “unfair” about this, Steve, so your premise is completely jacked. On the contrary, it’s a very reasonable prohibition, the statute has been interpreted reasonably to ensure that such liability does not attach, and that much (at least) is not going to change.

      What is “unfair” is when a short-sighted patent attorney takes a naive client’s money and advises them that they can “get around this” prohibition with some “clever” claim language (“clever” being in the eye of the attorney, in this case).

      1. and that much (at least) is not going to change.

        Maybe you missed the hints in the SC decision (ones like “assume without deciding”) that there very well may be change in the underlying Muniauction reasoning….

        You tend to miss a lot with your clinging to your mantra.

        1. The Federal Circuit is not going to expand the definition of “infringement” under 271(a) to include infringement of method claims by multiple actors acting independently without any having knowledge of what the other is doing or without direction by someone else. If they try to do that, the smackdown from the Supremes will be so hard that it’s likely one of the judges in the majority will end up retiring in shame.

          If you think otherwise, you are high.

          This is just as fundamental as the issue in Prometheus v. Mayo by the way. Therefore I’m not surprised that you are having trouble understanding it.

          1. Nice goalposts moving – you should take note of what I have actually said on the subject before accusing me of saying something other than what I have said (as is your typical pattern).

            Had you actually informed yourself (instead of leaping atop your soapbox), you would of course noticed that I have correctly supplied the black letter law here.

            But you tend to not want to see such, as it makes your rants seem even more juvenile (if possible).

          2. MM, the patent covers steps A, B, and C, and all the steps are practiced on an article to produce a new manufacture.

            Steps A and B are practiced by others. You practice step C. But you purchase the partially completed article because it has steps A and B practiced on it.

            Does A infringe under 271? Not according to BMC Resources. But under traditional notions of direct infringement?

          3. Completely independent and without knowledge is a standard that is quite different from control and direction. Perhaps there’s some middle ground – as there should have been all along.

  12. Jason: the issue of whether or not all the steps must be actually performed was never in dispute.

    Right. The problem is deciding which entities must perform the steps and what is the relationship of those entities to each other necessary to create infringement liability. As Alito points out (inelegantly, perhaps) it can’t be the case that simply because all the steps recited in a method claim are carried out, somewhere, by people acting independently that at least one of those people is liable for infringement of the method claim. But that was the way the Federal Circuit teed it up (or appeared to do so from the Justice’s viewpoint, anyway).

    Justice Alito’s sharp criticism is particularly inapposite here, given the difficulty of this particular issue and the meagre analysis that is provided in the opinion.

    The problem is that, for whatever reason, as a whole the Federal Circuit — which is supposed to be really good at this patent stuff — does a poor job at recognizing these fundamental issues. In large part that’s because the Federal Circuit operates under the mindset that it exists to protect patentees. More often than not, it will do backflips to create rules and write decisions which avoid any harm to the patentees whom it treats like allies at best and clients at worse.

    I think the Supremes did exactly what they should have done here under the circumstances. The decision is clear enough.

    To be clear, I agree that inducement under 271(b) should require that there be a direct infringer under 271(a). My point is simply that execution of this opinion could have been much better, and in treating the issue so clumsily the Court reinforced the appearance of just going through the motions.

    I didn’t get that impression. The Myriad decision was far, far worse and Scalia himself pulled the curtain open so we could all see that at least one Justice believed he really wasn’t given the tools to do the job in that case (odds that he was alone in feeling that way: zero). In that case, the problem can be traced back to the crxppy legal positions and arguments taken and made by both sides. With Prometheus, at least, we all lucked out because Breyer had a better understanding of the issues than any of the lawyers involved (and certainly better than the Federal Circuit).

    1. “As Alito points out (inelegantly, perhaps) it can’t be the case that simply because all the steps recited in a method claim are carried out, somewhere, by people acting independently that at least one of those people is liable for infringement of the method claim”

      Exactly.

      It doesn’t take a rocket genioos to see this.

      1. Where Alito, J., is wrong is the “people acting independently” part. To use the language of criminal conspiracy, the single accused inducer is the “hub,” and the people he induces are the “spokes” in the wheel of conspiracy.

    2. “More often than not, it will do backflips to create rules and write decisions which avoid any harm to the patentees whom it treats like allies at best and clients at worse.”

      Exactly. It is a lack of impartiality.

  13. Jason, but the difficulty is with what the Federal Circuit means by all the elements being performed. By whom, where, and when?

    What if the most material element is practiced and the article sold with the expectation that the last, but common, step be performed? What that immaterial element is performed outside the US? What if it is performed by one who has a license?

    I am not so sure the Federal Circuit’s opinion is all that clear.

  14. Dear Justice Alito:

    What if a defendant successfully suggests another perform just one step of a 12 step process, and performs the other steps herself?,

    Is the patent not infringed? Is it right that the Inventor or Assignee have no recourse?

    Shall I set up a bit torrent-esque website that suggests that various individuals perform fractions of various claimed methods so that the beneficial result of the methods can be had without there being a direct infringer thereby rendering all method patents null and void?

    1. What if a defendant successfully suggests another perform just one step of a 12 step process, and performs the other steps herself?,

      Is the patent not infringed?

      This is for the Federal Circuit to decide. The 271(a) question wasn’t properly presented to the Supreme Court.

      Is the patent not infringed? Is it right that the Inventor or Assignee have no recourse?

      Is it “right”? That would seem to depend on how much of a premium you want to put on competent claim drafting that covers the technological improvement being claimed versus claiming some hand-wavey b.s. “system” where the claim requires multiple entities related to each other by a commercial transaction to push buttons on machines that are, in most cases, separately unpatentable.

      More to the point, if you don’t like the way that the Supreme Court ultimately interprets the statute, then ask Congress to rewrite the statute. Because, hey, everybody loves patents, especially patents that prevent you from programming your own computer to do obvious stuff with information that rests unambiguously in the public domain.

      1. Curses for those electrons protons and neutrons that exist out there also free….

        /logic applied to the same end

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