The American Bar Association filed an amicus brief Wednesday that requests that the U.S. Supreme Court reaffirm well-established law that a patent is appropriately definite when “a person of ordinary skill in the art would understand the bounds of the claim.”
The brief was filed in Nautilus, Inc. v. Biosig Instruments, Inc., a case in which the petitioner asserts that a more stringent standard should be adopted for determining patent validity. The ABA, in its brief, urges the Supreme Court to maintain the current balance between public notice and the practical realities of claim drafting.
Calls for a more stringent standard for determining patent validity come amidst efforts on many levels — including from the White House and Congress — to enact reforms in the face of frivolous demands and lawsuits by non-practicing entities, commonly known as “patent trolls.” However, as noted in the ABA brief, changes to the Supreme Court’s existing standard will not address that issue.
“A well-functioning patent system demands claims that provide clear notice to the public. But it must also secure to inventors ‘who rely on the promise of the law to bring the invention forth’ the fruits of their labors,” the ABA brief reads.
Based on policy developed by the ABA Section of Intellectual Property Law’s 24,000 members, the brief urges: “Like other doctrines that seek to maintain what this Court has termed ‘the delicate balance’ between these competing interests, any test for determining whether a patent claim satisfies Section 112’s definiteness standard must adequately account for the imprecision inherent in reducing an invention to the form of words.”
The ABA brief further states that any benefits that could be derived from adopting the petitioner’s proposed, unnecessarily rigid, definiteness standard would be far outweighed by the resulting negative effects on both patent prosecution practice and claim construction practice before the district courts.
The ABA’s amicus brief is available online.
—————
In the first case to be heard by the U.S. Supreme Court on an increasingly widespread issue in patent law, Limelight Networks, Inc. v. Akamai Technologies, Inc. and the Massachusetts Institute of Technology, the American Bar Association filed an amicus brief today that calls for clarification of the law that applies when the combined conduct of multiple parties is alleged to infringe another’s method patent.
In its brief supporting neither party, the ABA urges the Supreme Court to reject the current “single-entity” rule under which a party that performed some, but not all, of the steps of a method patent cannot be liable for direct infringement.
Based on policy developed by the ABA Section of Intellectual Property Law’s 24,000 members, the brief states that this rule “permits many situations in which two entities collaborate with respect to a patented method yet escape liability for infringement, a result that offends basic notions of justice and fails to protect patent holders’ rights.”
The brief urges clarification that one or more entities may be liable for direct infringement when one entity directs or controls other entities in performing steps of a patented multi-step process – or multiple entities acted together to
perform, control or direct all of the steps of the process as part of a common design or purpose. As the brief states: “Refusal to provide a remedy for direct infringement despite the fact that every element set forth in a patent claim has been satisfied weakens the incentive to invent.”
The ABA’s amicus brief is available online.
