Akamai Technologies, Inc. v. Limelight Networks, Inc.
797 F.3d 1020
| Fed. Cir. | 2015Background
- Akamai sued Limelight alleging infringement of the ’703 patent (methods for delivering Internet content); at trial, Limelight’s customers performed the "tagging" and "serving" steps.
- Jury found Limelight directly infringed several claims; district court denied JMOL but later granted JMOL of noninfringement after this court’s Muniauction decision.
- Supreme Court vacated and remanded, noting the Fed. Cir. may have too narrowly construed 35 U.S.C. § 271(a).
- Sitting en banc, the Federal Circuit reconsidered divided (joint) infringement under § 271(a).
- The court held an entity can be held responsible for third-party performance when (a) it directs or controls others’ performance (including conditioning participation/benefit and establishing manner/timing), or (b) the actors form a joint enterprise.
- Applying those principles, the court found substantial evidence that Limelight conditioned use of its CDN on customer tagging/serving and established how/when customers performed those steps (contracts, welcome letters, technical support), so the jury verdict of direct infringement was reinstated.
Issues
| Issue | Plaintiff's Argument (Akamai) | Defendant's Argument (Limelight) | Held |
|---|---|---|---|
| Scope of § 271(a) for divided infringement | §271(a) can reach situations where one party directs or controls another’s performance or benefits from it | §271(a) limited to traditional agency, contractual performance, or joint enterprise; no direct infringement when steps split | Court: §271(a) can cover directed/controlled performance and joint enterprises; must attribute all steps to a single entity |
| Whether conditioning participation/benefit can create attribution | Conditioning access to a service on a third party’s performance and setting manner/timing attributes those steps to the service provider | Conditioning is insufficient absent formal agency or contract by which provider performs steps | Court: Conditioning use/benefit plus establishing manner/timing can make third-party steps attributable to the entity |
| Whether Limelight’s practices amounted to direction or control | Contracts, required tagging, implementation instructions, hostname assignment, and technical support show Limelight established manner/timing and conditioned use | Customers—not Limelight—performed tagging/serving, so Limelight cannot be sole actor for §271(a) | Court: Substantial evidence supported jury finding that Limelight directed/controlled customers, so Limelight liable for direct infringement |
| Joint enterprise as alternative theory | If proved, a joint enterprise would render each member liable for others’ acts | Limelight disputed the four elements of joint enterprise | Court: Described joint-enterprise test (agreement, common purpose, pecuniary interest, equal right of control); applied direction/control theory here and reinstated verdict (did not rest on joint enterprise) |
Key Cases Cited
- Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014) (Supreme Court remand noting possible overly narrow Fed. Cir. §271(a) analysis)
- BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) (attribution via agency/contract and vicarious-liability principles)
- Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (prior panel decision limiting divided infringement analysis)
- Metro-Goldwyn-Mayer Studios Inc. v. Grokster, Ltd., 545 U.S. 913 (2005) (discussing vicarious liability where one profits and can stop infringement)
- Golden Hour Data Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010) (interpreted in part contrary to this opinion and overruled to the extent inconsistent)