back to article Supreme Court nixes idea of 'indirect' patent infringement

The US Supreme Court has issued a ruling that could help shield companies and end users from patent-troll lawsuits. The court on Monday issued a unanimous ruling to overturn a Federal Circuit court ruling in the case of Akamai v. Limelight. In the opinion, written by Associate Justice Samuel Alito on behalf of the unified …


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  1. Trevor_Pott Gold badge


    1. Anonymous Coward
      Anonymous Coward

      You just need to make one or two very expensive examples.

      The others will take note.

    2. Voland's right hand Silver badge

      Not so sure

      This means that you can artificially split a procedure in any perfectly valid patent so you do the first 9 out of 10 steps and the end-user does step 10.

      As an example - I do all the steps to produce the competitor's patented medication except the final reaction and I ship the user a binary set of reagents. The user mixes them in a glass and voila - the patent has been circumvented as none of us has infringed fully.

      This decision will cause a massive patent proliferation. This means that a company now will patent steps 1, 1+2, 1+2+3, 2+3, 1+2+3+4, ... These will be checked even worse than before so there will be even more troll fodder on the secondary patent market in 10 years or so.

      So while it will cause some temporary releaf, by providing means to work around the current patent morass, this will actually make it worse in the long term.

      1. SnakeChisler

        Re: Not so sure

        I really don't know what your point is here what we had was a sham methods patent that they were using to shake down a company.

        Why would anyone care if they patent 1+2 & 1+2+3 most of it would get burnt with prior art and a lot of the rest unpicked with bleedin obvious. A lot of this is knocking other peoples ideas and cobbling them together and trying to claim its original or even worse computerizing know functionality and claiming its now on a computer its an invention.

        The US system is broken coz there is too much money floating around to make sure it stays as an extortion racket rather than actually patenting real useful ideas. Phone's are a prime example upward of 10,000+ patents in 1 device but everyone wants 5% of the retail for each patent that goes to court instead of say Phone cost 100$ so every patent is worth 100 - 50 / 10,000

      2. Vic

        Re: Not so sure

        > some temporary releaf

        Given the number of fig leaves in the Patent Industry, that's a rather marvelous turn of phrase :-)


    3. JeffyPoooh

      Akamai? The genesis of Anti-Net Neutrality and now a patent troll ?

      "Akamai had charged that Limelight had partially infringed upon its patents for delivering content over private networks..."

      I never thought of Akamai as a patent troll. I'm not convinced that they are, although their entire fundamental concept is rather bleedingly obvious. I'm not sure it's clever enough to justify a patent.

      BTW, Akamai's entire fundamental concept is now considered evil as "It's a clear violation of Net Neutrality!!!!" (scream the idiots).

  2. Mark 85 Silver badge

    It's a good start and hopefully it will work. The loophole is the "single party must perform all the steps involved in the infringement." I can see some companies ripping off a patent and telling the user to do one thing. Possibly the offering of instructions to do the "one thing" might constitute complete infringement by the company.

    I'm not sure what it will do the Apple/Samsung slugfests though. It will be interesting to see how this all plays out.

    1. dan1980

      @Mark 85

      I get what you're saying but not really.

      The thing is that the phones are devices the users are interacting with and so that interaction of the user with the device is part of the patents.

      Removing some of the 'smarts' of the processes may help but would negate the point of the features in the first place.

      For example, with the (frankly ridiculous) "Quick Links" patent*, the phone identifies some type of data in text - e.g. a phone number, address or date/time - and then, once touched, presents options to the user about what to do. For example, if it is a phone number, the user can call it, send a message or add it to their contacts. A date can go in the calendar and so on.

      Now, if you move some of that over to the user then, for example, the user would have to identify the text themselves and then tell the phone what type of data it is, thereafter the phone can present options. In this instance one might see the patent not applying as the critical function of identifying the data structures is handled by the user.

      Great, but I wouldn't think that was an overly-neat feature!

      * - AKA: "System and method for performing an action on a structure in computer-generated data".

      1. Mark 85 Silver badge


        In this case, it's a phone. What about the next that might not be a phone. Seems they way lawyers work it is on precedent. They might argue that this ruling only applies to phones. Or the courts might interpret it as "it applies to all devices and software".

        1. dan1980


          I suppose that's the battleground and one of the ways that a court can show bias - by interpreting both the scope and effect of a precedent.

          For example, in the Myriad case I mentioned, the Supreme Court vacated the Federal Circuit's original decision and ordered the case to be reheard so that they could take into account the recent precedent set in the Mayo case.

          In that instance, the Supreme Court basically said - our decision in Mayo should affect your decision in Myriad. The CAFC, in coming to exactly the same decision again (with the exception of Bryson, who dissented) decided that the Mayo precedent was not relevant.

          What I am saying is that the CAFC tends to water-down statutes and precedents that limit patentees and strengthen and expand rulings that favour them. This can be seen in the twin cases the Supreme Court overturned regarding awarding attorney's fees where they found that the CAFC had imposed additional restrictions above what was to be found in statue and precedent. Likewise the tests they applied in Nautilus v. Biosig case I referenced regarding ambiguity in a patent. The way they interpreted the statutes allowed a far greater degree of vagueness than the Supreme Court ruled was warranted.

          They can't completely ignore SCOTUS precedents but they can be particular about how they apply them and to what extent. Their track record suggests that any precedents like this (that favour defendants) will be applied as narrowly as possible.

      2. Don Dumb
        Thumb Up

        @dan1980 -

        Now, if you move some of that over to the user then, for example, the user would have to identify the text themselves and then tell the phone what type of data it is, thereafter the phone can present options. In this instance one might see the patent not applying as the critical function of identifying the data structures is handled by the user.

        You've just described copy-and-paste (into the phone app). That's exactly why 'moving bits of a patent to the user' shouldn't be covered by the same patent, it isn't an *invention* if someone is just doing the work that the invention should be doing.

        To stretch the 'Quick-Links' example further, I could do the same work by writing down the number I see on a piece of paper and then typing it into the phone's keypad. If copy-and-paste is part of the patent, then so would using paper and my eyes. Very quickly, any way of acheiving the goal becomes covered by the patent.

        1. dan1980

          @Don Dumb


          My point was simply that, while moving some steps to the user would likely get around the patent, in the case of those patents in dispute between Apple and Samsung (e.g. the 'Quick Links' and 'autocorrect') that would largely negate the benefit of the features in the first place, which is the phone 'understanding' what is going on an 'intelligently' suggesting options for the user based on that analysis.

          If the user is the one doing the heavy lifting then what is the point of the feature?

          In short, in the instance Mark and I were discussing, getting around the patents, while possible, would be pointless and so unlikely to be a tactic that Samsung would employ. (And, therefore, unlikely to resolve the current round of disputes.)

  3. Frumious Bandersnatch

    interesting, but quite specific

    I doubt that this will happen, but it could weaken the power of big copyright lobby interests in pursuing sites that are merely indexing (or even just linking to) "infringing" content. In such cases, it's the user who's downloading the content, with the indexer just telling them how to access it. In both the arenas of patent and copyright law, we know who the real infringers are---the people who hold the copies and distribute them---so they should be the real target of litigation, and not the "finger pointers" (who tell you how the things work or how to find them) or the people who follow that direction.

    Yeah, I know that patents and copyrights are completely different things, but I do think that the parallels are worth thinking about here. It could herald a radical shift towards sensible interpretation of "IP" ownership---if the judgement is allowed to stand, that is... Unfortunately, these things rarely follow "sensible" rules...

  4. dan1980

    Once more . . .

    While this case has been a bit more detailed than some other examples, this is still, at heart, another case of:

    1. District court rules in favour of the alleged infringer

    2. CAFC overturns, ruling in favour of the patent holder

    3. SCOTUS overturns, ruling in favour of the alleged infringer

    The key quote from Alito in this case is:

    "The Federal Circuit’s analysis fundamentally misunderstands what it means to infringe a method patent . . ."

    This pairs nicely with the decision in Nautilus v. Biosig where Ginsburg writes:

    "The Federal Circuit’s standard, which tolerates some ambiguous claims but not others, does not satisfy the statute’s definiteness requirement."

    Likewise in Medtronic v. Mirowski (Breyer)

    "To the extent that the Federal Circuit’s burden shifting rule makes the declaratory judgment procedure disadvantageous,that rule recreates the dilemma that the Declaratory Judgment Act sought to avoid."

    And so on - Octane v Icon & Highmark v Allcare, Sotomayer wrote that "The Federal Circuit's formulation is overly rigid . . . [and] . . . superimposes an inflexible framework onto statutory text that is inherently flexible".

    Mayo v Prometheus, AMP v Myriad, Ultramercial v Hulu - all decisions where the CAFC has ruled in favour of patent holders and the Supreme Court has had reverse the decisions. All unanimous or very close to and in all instances, the Supreme Court has had to educate the patent court (CAFC) on patent law.

    I am very glad that SCOTUS is taking a more active view in patent law and one can only hope that the Federal Circuit starts actually listening.

    Though, given their frankly odd decision in Myriad where the Supreme Court vacated the decision of the Federal Circuit and ordered them to re-hear the case in light of the decision in Mayo. In that instance, the CAFC, came to the same conclusion again, all but ignoring the Supreme Court, claiming the particulars and precedent of Mayo were simply not relevant.

    Once it got back to the Supreme Court, they correctly the Federal Circuit, confirming unanimously that the precedent set in Mayo was very much relevant to Myriad.

    Something has to be done as the Federal Circuit is clearly - as the Supreme Court shows - misconstruing, ignoring or attempting to subvert statutes and precedent in order to rule consistently in favour of patent holders.

    1. Mark 85 Silver badge

      Re: Once more . . .

      If we take your last paragraph at face value and three possibilities, there's a lot of questions.... I'm making a probably wrong assumption that these are appeals and not juried cases.

      Misconstruing - are the judges not competent? Not up on recent rulings or just plain don't give a crap about it? This one is tough since these judges are supposed to be all "trained" but many don't have a clue about patent law as it is a speciality.

      Ignoring - If they're ignoring, then there's some digging to be done to find out why. A bit of bribery? The good ol' boy network on give the judge a job when he retires? Or....????

      Subversion - I can understand this one. I would suspect local favoritism to play a part.

      Generally though, if one follows the money, one finds an answer.

      1. dan1980

        Re: Once more . . .

        @Mark 85

        You are correct - they are bench trials so no juries.

        As to what is going on in the Federal Circuit, I wrote a bit about this recently.

        The short version is that any given court may, depending on the composition of the justices, display a bias one way or another. This is clear in (e.g.) Delaware and East Texas, which are so patent-friendly (~45-50% win rate) that some patent-litigants set up their head offices in those districts to make getting their cases heard there more likely.

        Other courts, like Maryland or Colorado are significantly less patentee-friendly, with only a 25% win rate.

        This is normal but the problem occurs because the CAFC is just a single court and it presides over all patent appeals so its leaning is far more influential.

        Of note, it is manifestly not ignorant of patent law, given that nearly half the judges of the CAFC come from an IP/Patent background! This may actually play into it though.

        Marrying that with your statement that ". . . if one follows the money, one finds an answer", you might find that, as patent lawyers generally work for patent holders rather than for the defendants, having a bench composed of patent lawyers means an inevitable bias towards patentees.

        1. Maganda2001

          Re: Once more . . .

          Hi Dan:

          Good comments, but just a few observations. Not all patent trials are "bench", while that's the case on appeal, many, many patent cases are, in fact, decided by a jury. Also, while some of the Fed Cir justices may have had a patent atty background, its more likely that they didn't, and just have a technical background with a law background, not necessarily having practiced as a patent attorney.

          Most important, though, I've practiced for 15 years and have represented more defendants than plaintiffs in patent cases. So I don't agree that all patent attorneys are always pro-plaintiff. Over-reaching in the patent world goes both ways....

          Lastly, as I'm sure you're aware, the majority of cases fall into that "gray" area- i.e., they're tough cases and each side has some points. True, the courts get it wrong lots of times, but, unfortunately, getting to the bottom of the technical and legal issues in patent can be massively complex and difficult.

          1. dan1980

            Re: Once more . . .


            Thanks for the comments - much appreciated.

            I understand that many patent trials are decided by juries but those I was discussing go through the CAFC, so those are always bench trials.

            Regarding the composition, I did the research back for the last story I posted in (as per the link) and it was 8 of 18 that came from an IP background. You may well be right that some of those are more technical than specifically patent lawyers. That's a job for a quieter day perhaps - to more thoroughly research the justices' backgrounds.

            Thanks for the input!

    2. Tom 13

      Re: Once more . . .

      Something has to be done as the Federal Circuit is clearly - as the Supreme Court shows - misconstruing, ignoring or attempting to subvert statutes and precedent in order to rule consistently in favour of patent holders.

      Remove the specificity of it being SCOTUS and patents and you have a more general and accurate indictment of our current court system. Too often the courts subvert the clear wording of the laws to enable some outcome they deem socially beneficial. The problem here is that there is a good reason that power was reserved to legislatures. Legislatures can say "oops we goofed, let's undo that" courts can't. Their precedents stand.

  5. Anonymous Coward
    Anonymous Coward

    Interesting ruling, but

    I wonder if it might have unintended consequences. No matter how complex of a device one patents, if one leaves out some critical element to be done or programmed in by someone else, it can be copied freely.

    In the case of copying the implementation of using private networks for content delivery we all say "good" because Akamai deserves to lose. But what if a drug company develops a pill that's a cure for leukemia, and someone copies it by producing a pill that contains all but a couple ingredients, so the instructions say "take one pill with four ounces of grape flavored low sugar Gatorade and two Bayer strawberry flavored chewable baby aspirin"

    1. MacroRodent

      Re: Interesting ruling, but

      In your example, I would say the ruling would not be a big problem for the drug company. The alternative would still be clearly inferior (more complex and risky to use), so few patients would take it instead of the official medicine. Certainly no doctor mindful of his reputation would prescribe it.

      Remember that even though the patent on the original Aspirin has expired ages ago, the Aspirin still sells at a premium compared to generic versions (or at least it does where I live).

      1. jabuzz

        Re: Interesting ruling, but

        The Treaty of Versailles confiscated the Asprin trademark as part of war reparations from Germany. So in USA, UK, France, Russia there is no such thing as brand name Aspirin. One presumes that parts of the world that where in the British Empire in 1919 can also claim the trademark is not valid, as could fragmentary parts of the victor nations so Ireland, Belarus, Ukraine etc. are also covered.

    2. Destroy All Monsters Silver badge

      Re: Interesting ruling, but

      But what if a drug company develops a pill that's a cure for leukemia, and someone copies it by producing a pill that contains all but a couple ingredients


      so few patients would take it instead of the official medicine

      A) BRANDED SUPERSHARK® WALLSTREETO™ RELAXATOR® subsidized by Medicare B: USD 1500 per dose.

      B) Shenzen Blue Oyster Copycat: USD 10 per dose.

      A poor schlok in a poor country will go for B), not for A) even if there are risks, you can be sure of that. But at least he can go for B)

      1. dan1980

        Re: Interesting ruling, but


        Given your icon choice, I feel it important to point out the glaring error in your post - the word is 'schlock'.

        Sheesh, man.

    3. Tom 13

      Re: Interesting ruling, but

      But what if a drug company develops a pill that's a cure for leukemia, and someone copies it by producing a pill that contains all but a couple ingredients

      No worries there mate. Lots of places do that now only they don't even separate out a component or two. Some just ignore patent law completely, others put up smoke screens about social justice. But the drug companies have worked it out. Sucks to be me in their solution since I get to pay for all the free loaders, but hey it's all good for social judgement and sticks it to the man.

  6. ratfox

    Yay SCOTUS

    Please tell those federal circuit courts to stop bogging down the system.

  7. Anonymous Coward
    Anonymous Coward

    The patent

    Here is the abstract for the patent:

    The present invention is a network architecture or framework that supports hosting and content distribution on a truly global scale. The inventive framework allows a Content Provider to replicate and serve its most popular content at an unlimited number of points throughout the world. The inventive framework comprises a set of servers operating in a distributed manner. The actual content to be served is preferably supported on a set of hosting servers (sometimes referred to as ghost servers). This content comprises HTML page objects that, conventionally, are served from a Content Provider site. In accordance with the invention, however, a base HTML document portion of a Web page is served from the Content Provider's site while one or more embedded objects for the page are served from the hosting servers, preferably, those hosting servers near the client machine. By serving the base HTML document from the Content Provider's site, the Content Provider maintains control over the content.

    1. Mage

      Re: The patent

      The patent itself in this should be struck out. There should be NO patents for Business processes, mathematics or software (Copyright covers software).

      Patents should be:


      Not obvious to anyone versed in the art.

      No very similar prior art. Should not have to be identical.

      For something that a "prototype" can be made. i.e. an "Invention".

      So for example RCA superhet patent should have been invalid and later F.M. as these both quickly became obvious to experts in Radio versed in Mathematics and in both cases had even been demonstrated elsewhere.

      Edison's attempt to have a monopoly on Movie film was eventually stopped but that took over 10 years! Crazy.

      The US Patent system has been "broken" since Victorian era and is getting worse.

      1. Tom 13

        Re: The patent

        No very similar prior art.

        While I generally concur with the intent of that statement it generates problems. Consider machining a new fastener which includes a novel way that improves the strength of the connection for the size of the fastener. The initial applicant patents it. A competitor looks at the patent and comes up with a novel way to avoid a couple of machining operations required by the initial applicant. Under the current system the competitor can patent the improvement. Under your example he can't. Second patent still has to pay the first because he still had the original concept. The first doesn't have to pay the second so long as he follows his old method, but if he wants to improve the process he has to pay the second person.

        1. 100113.1537

          Re: The patent

          Condiment, never ever EVER read any meaning into the abstract of a patent. The only thing which matters are the claims, which are almost always restructured from the initial filing, whereas the abstract and disclosure information is not edited or changed at all. If you want to know what the patent covers, you have to read the granted claims because the vast majority of this abstract is almost certainly prior art.

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