797 F.3d 1020
Fed. Cir.2015Background
- Akamai sued Limelight alleging infringement of U.S. Patent No. 6,108,703, which claims methods for delivering content over the Internet; at trial Limelight’s customers performed the “tagging” and “serving” steps.
- Jury found Limelight infringed claims 19, 20, 21, and 34; district court initially denied JMOL, but later granted noninfringement after this court’s Muniauction decision.
- The Supreme Court vacated and remanded, suggesting this court revisit whether § 271(a) was construed too narrowly.
- The en banc Federal Circuit articulates the law of divided (joint) infringement under § 271(a) and reviews the trial evidence de novo for substantial-evidence sufficiency on factual findings.
- The court holds a defendant can be liable for method steps performed by others when those steps are attributable to the defendant either because the defendant directed or controlled performance or because the actors formed a joint enterprise.
- Applying that framework, the court finds substantial evidence that Limelight conditioned customers’ use of its network on customers performing tagging/serving and established the manner/timing of that performance (contracts, onboarding, technical guidance), so all steps are attributable to Limelight.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Scope of § 271(a) for divided infringement | § 271(a) should cover situations where multiple actors perform steps if one actor can be attributed all steps | § 271(a) requires a single actor; divided performance prevents direct infringement | § 271(a) can reach divided performance when all steps are attributable to one entity via direction/control or joint enterprise |
| When are third parties’ actions attributable via direction or control? | Attributable where defendant conditions participation/benefit on performance and prescribes manner/timing | Limit attribution to traditional agency, contract, or principal-agent relationships | Attribution arises when defendant conditions use/benefit on performance and establishes manner/timing of that performance (vicarious-liability principles apply) |
| Role of joint enterprise | Joint enterprise among multiple actors makes each liable for others’ steps | Joint enterprise requires clear proof of its four elements | Joint enterprise liability applies if agreement, common purpose, shared pecuniary interest, and equal right of control are shown |
| Application to Limelight facts | Limelight’s contracts, onboarding, hostname integration, technical support, and requirements show conditioning and control over tagging/serving | Customers perform tagging/serving; Limelight did not itself perform those steps, so no direct infringement | Substantial evidence supports jury finding that Limelight conditioned use and established manner/timing; verdict of direct infringement reinstated |
Key Cases Cited
- BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir.) (framework for attributing third-party performance to single actor under § 271(a))
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir.) (prior panel decision affecting divided infringement analysis)
- Golden Hour Data Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir.) (court overruled to the extent inconsistent with en banc ruling)
- Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (vicarious liability principle that one who profits and can stop infringement may be liable)