Academic journal article Suffolk University Law Review

Patent Law - Divided Infringement of Method Claims: Federal Circuit Broadens Direct Infringement Liability, Retains Single Entity Restriction - Akamai Technologies, Incorporated V. Limelight Networks, Incorporated

Academic journal article Suffolk University Law Review

Patent Law - Divided Infringement of Method Claims: Federal Circuit Broadens Direct Infringement Liability, Retains Single Entity Restriction - Akamai Technologies, Incorporated V. Limelight Networks, Incorporated

Article excerpt

Patent Law--Divided Infringement of Method Claims: Federal Circuit Broadens Direct Infringement Liability, Retains Single Entity Restriction-- Akamai Technologies, Incorporated v. Limelight Networks, Incorporated, 797 F.3d 1020 (Fed. Cir. 2015).

Infringement of patent claims is a statutory tort. (1) The United States Code governs direct infringement under 35 U.S.C. [section] 271(a), which encompasses infringement of both apparatus and method claims. (2) Infringement of a method claim requires its use by the performance of each step of the claimed method. (3) In Akamai Technologies, Inc. v. Limelight Networks, Inc., (4) the Court of Appeals for the Federal Circuit addressed the issue of liability for divided infringement of method claims. (5) Specifically, the court addressed whether a defendant, in an arms-length relationship with a third party, can be liable for direct infringement when it performs some steps of a method claim and the third party performs the remainder of the steps. (6) The court held the defendant liable for direct infringement because the third party's actions are attributable to the defendant, but the court also maintained that only single entities can be liable for direct infringement. (7)

In 2006, Akamai Technologies, Inc. (Akamai) and the Massachusetts Institute of Technology (MIT) filed a patent infringement action against Limelight Networks, Inc. (Limelight). (8) The lawsuit included allegations of infringement of U.S. Patent No. 6,108,703 ('703 patent), assigned to MIT and exclusively licensed to Akamai. (9) Method claims of the '703 patent comprise steps for faster delivery of content over the Internet via a content delivery network (CDN), and involve "tagging" selected content for delivery via the CDN rather than via a content provider's servers. (10) At trial, a jury found that Limelight infringed claimed methods of the '703 patent in collaboration with its content provider customers who performed the "tagging" step. (11) Following this verdict, the Court of Appeals for the Federal Circuit held in another case that a method claim can be directly infringed only when all of its steps are performed by or attributable to a single entity, excluding "arms-length collaboration" from the scope of direct infringement liability. (12) In view of this single-entity restriction and limited attribution theory shielding arms-length seller-customer relationships, the district court granted Limelight's motion for judgment of noninfringement as a matter of law. (13)

On appeal, a Federal Circuit panel decision affirmed that Limelight is not liable for direct infringement because it did not perform all steps of the claimed methods, and the "tagging" step Limelight's customers performed is not attributed to Limelight. (14) The Federal Circuit sitting en banc, however, reversed the panel's decision, reasoning that although Limelight and its customers did not directly infringe under 35 U.S.C. [section] 271(a), Limelight may be liable for induced infringement under 35 U.S.C. [section] 271(b). (15) The United States Supreme Court granted certiorari and held that there cannot be liability for induced infringement under Section 271(b) when no one has directly infringed under Section 271(a) or any other statutory provision. (16) The Supreme Court, however, did not review the merits of who may directly infringe, suggesting that the Federal Circuit may revisit the scope of Section 271(a). (17)

Upon remand from the Supreme Court, a divided Federal Circuit panel decided that Limelight did not directly infringe the '703 patent. (18) The majority defended the single-entity restriction under Section 271(a) and reasoned that a customer's actions may not be attributed to Limelight because attribution is limited to agency relationships, contractual agreements to perform, and joint enterprises. (19) By contrast, the dissent argued that Section 271(a) encompasses joint tortfeasor liability. (20) The dissent criticized the majority rule because it leaves a "gaping hole" that allows parties to evade liability for infringement of method claims by dividing infringement among multiple parties in arms-length relationships. …

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