Supreme Court Action: Patent Infringement and Chemical Weapons with a Side of the Tenth Amendment

The Supreme Court decided three cases yesterday.  Two are patent infringement cases and the third rejects a criminal conviction under a chemical weapons treaty.  Spoiler alert:  The Court of Appeals for the Federal Circuit is reversed in both infringement cases.

The first case is Limelight Networks, Inc. v. Akamai Technologies, Inc. (12-786).  Limelight and Akamai both run content delivery networks (CDNs).  Akamai is the exclusive licensee of a patent that defines steps to deliver content.  Limelight uses several of the steps but not all of them.  The step in particular is performed by third parties using Limelight’s services to deliver their content whereas Akamai performs that step itself as part of the process.  Akamai sued for infringement and won a $40 million judgment in the District Court.

The Federal Circuit decided Muniauction, Inc. v. Thomson Corp., 532 F. 3d 1318 (2008) shortly after the jury returned its verdict.  That case held that a defendant in a direct infringement case must follow all of the steps to be liable.  On motion, the District Court reversed itself.  The Federal Circuit reversed.  It held en banc that a defendant could be held liable even when there is no direct infringement provided the evidence could support liability on an inducement theory.

The Supreme Court reversed.  It held that §271(a) of the Patent Act (the infringement section) requires all steps to be performed by an infringer before liability attaches.  Liability for inducement (§271(b)) requires a finding of direct infringement under §271(a).  The Court stated the Federal Circuit’s conclusion that infringement by inducement existed independently from the statute is wrong based on the Court’s precedent.  The Court declined to review or validate the rule announced in Miniauction here, sending the case back to the Federal Circuit to draw its own conclusions on the case.  Justice Alito delivered the opinion for a unanimous Court.  I’ll mention as a side note that when the Court established its web site in 2000 or so that it distributed its opinions through Akamai.  It wasn’t long before the Court dropped that arrangement and used its own servers.

The second patent case is Nautilus, Inc. v. Biosig Instruments, Inc. (13-369). The case concerns the proper standard for definiteness a court will use in construing a patent under §112 ¶2 of the Patent Act:

The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.

Biosig is the licensee of a patent that describes a device that measures heart rate on an exercise machine.  It does so by filtering out electromyogram (EMG) signals from electrocardiograph (ECG) signals through use of a electrodes placed on a metal cylinder attached to the machine.  The patent described this as a “common” electrode “mounted . . . in spaced relationship with each other.”  Nautilus sold exercise equipment with a similar feature.  Biosig sued for infringement.

The District Court granted summary judgment to Nautilus holding that “in spaced relationship with each other” failed the definite test of §112.  The Court of Appeals for the Federal Circuit reversed.  It held the standard of review to be that the claim is “amendable to construction” and is not insolubly ambiguous.”  The Supreme Court reversed.  It said the standard to determine indefiniteness is whether the claims, read in light of the patent’s specification and prosecution history fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.  Though language is imprecise, it must afford clear notice of the claim.  The Federal Circuit’s standard would allow some patents but not others without any consistency.  The Court does not decide the merits of Biosig’s claim against Nautilus.  It sends the case back to the lower courts for further reconsideration in light of its ruling.  Justice Ginsburg delivered the opinion for a unanimous Court.

The third case is Bond v. United States (12-158).  It concerns the application of the Chemical Weapons Implementation Act to an individual who used several chemicals to exact revenge on another.  Carol Anne Bond found out that her friend Myrlinda Haynes was carrying a child fathered by Bond’s husband.  She did not take the news well.  Bond acquired toxic chemicals and applied them to Haynes’ car door, mailbox, and door knob.  Haynes avoided most of the applications as they were easy to see.  She did suffer a minor burn to her thumb on one occasion and treated it by rinsing her hand with water.

Bond ultimately was caught.  Federal prosecutors brought charges against Bond that included a violation of the Chemical Weapons Implementation Act.  Bond moved to dismiss these particular charges as violating of the Tenth Amendment.  The District Court denied the motion and Bond entered a conditional guilty plea reserving her right to appeal.  The Court of Appeals for the Third Circuit affirmed the plea holding that Bond lacked standing to raise the Tenth Amendment challenge to her conviction.

The Supreme Court reversed in an earlier case (Bond I) holding that an individual may “assert injury from governmental action taken in excess of the authority that federalism defines.”  The Court did not express any views as to the constitutional challenge in that case.  On remand, the Third Circuit affirmed the conviction holding that the terms of the Act applied because of the highly toxic nature of the chemicals and that her use of them did not reach the “peaceful use” exception.  Bond’s Tenth Amendment claim was also rejected.

The Supreme Court reversed again.  It did not reach the Tenth Amendment argument as the Court stated that the Act did not apply to Bond’s conduct.  Congress did not intend the Act to apply to what amounts to a local assault normally prosecuted by the states.  Congress does not normally intrude on a state’s police power under principles of federalism.  The Court is unwilling to assume that is the case here.

In sum, the global need to prevent chemical warfare does not require the Federal Government to reach into the kitchen cupboard, or to treat a local assault with a chemical irritant as the deployment of a chemical weapon.  There is no reason to suppose that Congress—in implementing the Convention of Chemical Weapons—thought otherwise.

Chief Justice Roberts delivered the opinion of the Court and was joined by Justices Kennedy, Ginsburg, Breyer, Sotomayor, and Kagan.  Justice Scalia filed an opinion concurring in the judgment as was joined by Justice Thomas and by Justice Alito as to Part I.  Justice Thomas filed an opinion concurring in the judgment as was joined by Justice Scalia and by Justice Alito as to Parts I, II, and III.  Justice Alito filed an opinion concurring in the judgment.  The concurrences were chomping at the bit to reach the constitutional question. –Mark

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