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.