Akamai Techs. v. Limelight Networks, Inc., No. 2009-1372, -1380, -1416, -1417, 2015 U.S. App. LEXIS 7856 (Fed. Cir. May 13, 2015) (Linn, J.) (Moore, J., dissenting). Click Here for a copy of the opinion.
Akamai Technologies sued Limelight for infringement of a patent related to content distribution on the internet. Limelight performed each step of the asserted method claim, except for a "tagging" step that was performed by Limelight's customers. In a previous appeal, the Supreme Court held that Limelight could not be held liable for inducing infringement under § 271(b) unless someone, induced by Limelight, had directly infringed the method claim. However, the Supreme Court did not decide whether either Limelight or its customers directly infringed Akamai's patent, and remanded the case to the Federal Circuit on that issue.
The Federal Circuit held that neither Limelight nor its customers had directly infringed Akamai's patented method. A method claim is only directly infringed when all method steps are performed by a single entity. This "single entity" can include more than one party only where there is a principal-agent relationship, a contractual arrangement, or a joint enterprise. One entity must act as a "mastermind," with sufficient control over others such that their acts are attributable to the mastermind. Here, the relationship between Limelight and their customers is not sufficient to find that either party performed all the steps of the method claim, and thus neither party directly infringed the patent.
The majority reached this result by holding that 35 U.S.C. § 271(a) does not embrace joint tortfeasor theories. Under the common law, two parties acting in concert, in pursuit of a common goal, plan, or purpose, would be sufficient for liability. However, the statute did not incorporate common-law theories. Instead, § 271(b) and (c) are the only circumstances that Congress intended for a party to be liable for less than a direct infringement. Further, a reading of § 271(a) that permitted joint tortfeasor theories would render § 271(b) redundant. The majority also criticized the dissent for supporting an intent requirement for direct infringement, encouraging predatory customer infringement suits, and permitting the absurd result that a customer could infringe a dependent claim while not infringing the related independent claim.
Judge Moore dissented, arguing that § 271(a) includes joint tortfeasor liability. The majority's "single entity" rule came from a misreading of Warner-Jenkinson Co. v. Hilton Davis Chemical Co., 520 U.S. 17, 40 (1997). The "all-elements rule" for the purposes of the Doctrine of Equivalents does not likewise require a single entity to infringe all elements under § 271(a). Additionally, the term "whoever" used at the beginning of § 271(a) is plural, not singular, and thus refers to the acts of multiple persons. Further, between the Supreme Court's reading of 271(b) and the majority's reading of 271(a), Akamai's invention is clearly being infringed, yet Akamai has no remedy, creating a "gaping hole" in liability under § 271. Finally, even if the majority's rule applied, Limelight is clearly the mastermind of the infringement, and should be found liable under the majority's rule. They provided the system, and perform all steps, except one. That one step is necessary for customers to use Limelight's system, and thus one that all customers perform. Judge Moore concludes her dissent by calling for the Federal Circuit to take the case en banc to decide whether the single-entity rule, or common-law joint tortfeasor rule applies to infringement under § 271(a).
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
