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August 13, 2015


Was that Supreme DICTA that just lost out to a direct ruling....?

Or does "dicta" trump everything, if that "dicta" come from Royalty?

...and I would hasten to add that Benson and Flook would be even more of a mess today for statutory law if we did not have a "lower" court that dared to notice and point out when the Emperor was in the buff...

I like yesterday's Akamai decision because it makes my job easier, but I have this uneasy sense that the SCotUS will not let this ruling stand. What exactly is the value of 271(c) under this new reading of 271(a)? It looks to me like yesterday's construction of 271(a) makes 271(c) rather superfluous, and it is not good when a statutory construction renders part of the statutory text superfluous.

Hopefully this is just a case of the justices pointing out where the CAFC contradicted itself, the CAFC fixing the contradiction, and we all move on from there.

"[T]here has simply been no infringement of the method [of the '703 patent], because the performance of all the patent's steps is not attributable to any one person."


Let me emphasize that this statement was also made by Alito in the context of an egregious faux pas in his Opinion for the Court which grossly mischaracterizes the Federal Circuit per curiam majority’s basis for its ruling that there was inducing infringement liability under Section 271(b):

"“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.”

As others have observed, the Federal Circuit’s “reasoning” in Chief Judge Radar’s majority ruling contains no such “view” that infringement liability (including inducing infringement liability under Section 271(b)) may be based upon anything other than that all steps of the claimed method must be performed, whether by one actor or by a combination of several actors. Such a faux pas in Alito’s opinion is not only astonishing, but frankly undermines the credibility of the ruling made by the Supreme Court because it is based upon a fundamental factual error, i.e., inaccurately characterizing the lower court’s (i.e., the Federal Circuit’s) ruling.

And as others have also observed, it is utterly embarrassing for the Royal nine to make such a fundamental "gaff" as mischaracterizing the ruling of the appellate court being overturned, one that any law student would certainly be chastised for in the class room. I'm sure Seth Waxman (who is to be commended for his skillful advocacy in this case) will undoubtedly point this egregious faux pas out far more delicately and tactfully than I have.

The en banc Federal Circuit seems to have thumbed its nose at the Supreme Court. So the big question is whether the Supreme Court will grant cert once again. I wouldn't rely on this decision quite yet.

I am struck with the contrast between Mike Borella and EG's posts.

I am also reminded of the words of the Supreme Court itself, concerning the difference between "being right" and merely "being final."


a question in earnest for you: what happens when that "final" body is the one in error (including being self-contradictory), and those errors are pointed out?

Do we have a case like Brulotte, where the error is even recognized, but minimized and someone else is called to clean up the mess?

Do we have a case like Benson, where dicta overpasses holding?

Do we have a case like Graham, where the Supremes attempt to spin the actions of Congress and attempt to reclaim their pre-1952 powers?

Must we fawn and attempt to be "delicate and tactful" when being direct, even brutally direct, appears to be the path required?

Have we turned into the crowd, fearfully mindful of the power of the emperor, murmuring how delightful his new clothes are?


There are two errors here.

The CAFC contradicted itself when it stated that "[t]hat principle, that there can be no indirect infringement without direct infringement, is well settled," then concluded that "[n]othing in the text indicates that the term infringement in section 271(b) is limited to infringement by a single entity. Rather, infringement in this context appears to refer most naturally to the acts necessary to infringe a patent, not to whether those acts are performed by one entity or several." The court went on to conclude that there was no direct infringement in Akamai, but there was indirect infringement.

This raised Justice Alito's ire. Unfortunately, his opinion completely mischaracterized the whole notion of infringement of a method claim, as EG points out above.

As it stands right now, the CAFC seems to have fixed their error, and set forth a more reasonable test. Hopefully, Alito's error will continue to be ignored, as that is the only rational thing to do with it.


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