Akamai Technologies, Inc. v. Limelight Networks, Inc.
692 F.3d 1301
| Fed. Cir. | 2012Background
- Akamai owns a web-content delivery patent; Limelight provides a competing service and some steps are performed by Limelight’s customers rather than Limelight itself.
- McKesson owns a patent on a method for electronic provider–patient communications; Epic’s customers perform the steps, with Epic not performing any steps itself.
- District courts held no direct infringement in both Akamai and McKesson; Limelight and Epic initially won noninfringement dispositions based on divided performance of steps.
- The en banc court overrules a line of cases to hold that induced infringement can reach divided infringement where multiple actors perform steps, without any single actor performing all steps.
- The court clarifies that all steps of a claimed method must be performed, but not necessarily by a single entity, and remands for further proceedings on induced infringement in both cases.
- The majority emphasizes remedy is apportioned by traditional tort-like considerations and rejects the prior single-entity direct-infringer requirement as a basis for liability.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Can induced infringement attach where multiple actors perform the steps? | Akamai/McKesson argue yes; no single direct infringer is required so long as induced acts collectively infringe. | Limelight/Epic argue no; liability hinges on a single direct infringer or agency/directing relationship under BMC Muniauction. | Yes; induced infringement can apply with divided infringement; no single direct infringer required. |
| Must there be a single entity liable for direct infringement to support inducement liability? | Judge Linn would keep the single-entity requirement; inducement depends on a direct infringer. | The majority rejects the single-entity constraint for inducement in method claims. | The court rejects the single-entity rule for inducement; induced infringement can apply without a single direct infringer. |
| Does § 271(b) require a direct infringement predicate by a single actor for inducement liability? | Inducement liability arises when any combination of actors collectively infringes. | Inducement requires a direct infringer identifiable under a single-actor framework. | Inducement liability can attach even when no single actor direct-infringes; a divided-direct-infringement scenario can support inducement. |
| Should the remedies and apportionment of liability be handled under traditional tort principles in divided infringement? | Remedies should be apportioned among multiple actors based on contribution and knowledge. | Remedies could be limited or altered under a new inducement-only framework. | Remedies may be apportioned by traditional tort principles; the division of liability is case-specific. |
Key Cases Cited
- BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (indirect infringement requires a direct infringer; division of steps challenges)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (direct infringement requires control/director over all steps in some contexts)
- Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S. 336 (U.S. 1961) (direct infringement and reconstruction/repair distinction; single-actor framework not universal)
- Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983) (support for contributory infringement in multi-step processes; early division of steps)
- Cross Medical Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293 (Fed. Cir. 2005) (agency/director principles in indirect infringement context)
- Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770 (Fed. Cir. 1993) (direct infringement requires all elements; links to indirect infringement principles)