Akamai Technologies, Inc. v. Limelight Networks, Inc.
786 F.3d 899
| Fed. Cir. | 2015Background
- Akamai sued Limelight alleging direct infringement of method claims of U.S. Patent No. 6,108,703 based on a divided-infringement theory: Limelight performed most claimed steps and its customers performed the remaining "tagging" step.
- The case reached the Federal Circuit after the Supreme Court vacated and remanded; this panel considered whether Limelight could be held liable under 35 U.S.C. § 271(a) when multiple actors perform different claim steps.
- Federal Circuit precedent (BMC and Muniauction) established the "single-entity" rule: direct infringement of a method claim requires that all steps be performed by or attributable to one entity (e.g., via agency, contract, or joint enterprise).
- Akamai urged a broader rule: § 271(a)’s word "whoever" covers joint tortfeasors and liability when a defendant causes or instructs others to perform claim steps, arguing this should not be limited to agency/contract/joint-enterprise.
- Limelight argued customers acted independently for their own benefit, were not agents, and the contract did not compel customers to perform claimed steps; thus Limelight did not perform "each and every" step and could not be a direct infringer.
- The panel held Limelight did not directly infringe because (1) it did not perform all claim steps and (2) there was no legal basis to attribute its customers’ performance to Limelight under the established vicarious/attribution tests; thus § 271(a) was not read to incorporate broad joint tortfeasor liability.
Issues
| Issue | Plaintiff's Argument (Akamai) | Defendant's Argument (Limelight) | Held |
|---|---|---|---|
| Whether § 271(a) permits direct infringement when multiple actors together perform method claim steps (divided infringement) | "Whoever" is plural; § 271(a) should cover joint actors who act in concert to perform a method (joint tortfeasors) | § 271(a) requires a single entity performing all steps or attribution of others’ acts to that entity; otherwise §§ 271(b)/(c) would be redundant | Held: Direct infringement requires all steps performed by or attributable to a single entity (single-entity rule); divided performance without attribution is not direct infringement |
| Whether § 271(a) incorporates common-law joint tortfeasor liability (acting in concert without agency/contract) | Joint tortfeasor principles should apply; statute’s plain language and common law support joint-liability | Incorporating joint tortfeasor law would make §§ 271(b) and (c) redundant and expand liability to innocent customers | Held: § 271(a) does not import broad joint tortfeasor liability; Congress limited multi-actor liability via §§ 271(b) and (c) |
| Proper attribution test to treat multiple actors as a single actor | Liability can attach where defendant "directs or controls" third parties or otherwise causes them to perform steps; broader tests urged | Attribution requires traditional vicarious relationships (agency, contract, or joint enterprise—"direction or control" narrowly applied) | Held: Attribution is confined to situations reflecting vicarious liability (principal-agent, contractual allocation, joint enterprise); no broader standard adopted |
| Application to Limelight’s facts: Were customers’ acts attributable to Limelight? | Limelight provided instructions, a standard contract, and required customers to tag content to use the service; Limelight is the mastermind | Customers independently decide content and control use of CDN; contracts do not compel customers to perform claimed steps; no agency/joint enterprise | Held: No evidence customers acted as Limelight’s agents or in a joint enterprise; Limelight not liable for direct infringement; JMOL of noninfringement affirmed |
Key Cases Cited
- BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (adopts single-entity rule and attribution via vicarious relationships)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (applies direction-or-control attribution test for divided infringement)
- Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17 (1997) (all-elements/element-by-element approach referenced re: infringement analysis)
- Global-Tech Appliances, Inc. v. SEB S.A., 563 U.S. 754 (2011) (discusses induced infringement and knowledge requirements for § 271(b))
- Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (1961) (explains that contributory/inducement liability presupposes direct infringement)
- Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983) (illustrates that third-party performance of process steps prevents direct liability absent attribution)