Is the “gaping hole” closing?

published in McAfee & Taft tIPSheet Alert | August 14, 2015

In this world nothing can be said to be certain, except death and taxes.
– Benjamin Franklin

Yesterday, the Federal Circuit in Akamai Technologies Inc. et al. v. Limelight Networks Inc., No. 09-1372 (Fed. Cir. Aug. 13, 2015), overruled prior decisions to the extent they indicate that direct infringement of method claims are limited to solely principal-agent relationships, contractual arrangements, and joint enterprises.  In a unanimous en banc decision, the court found there could also be liability if two conditions are met: (1) the alleged infringer conditions participation in an activity, or receipt of a benefit, upon performance of one or more steps of a patented method; and (2) the alleged infringer establishes the manner or timing of that performance.

Vintage Paper With HoleAlthough further case law decisions will be required to define the bounds of the court’s recent holding, this decision on its face appears to shrink the “gaping hole” of patent infringement liability mentioned in our August 5, 2015 tIPSheet. In other words, this decision will make it easier for patent owners of method claims to prove infringement where multiple parties are involved in performing the steps of a method claim. The Federal Circuit en banc panel must have read our August 5, 2015 tIPSheet®. 🙂

In applying their new rule, the Federal Circuit looked at objective circumstances, such as the standard contract signed by Limelight’s customers, the distribution of instructional materials on how to use Limelight’s services, and Limelight’s engineers that assist with installation and perform quality assurance testing. According to the Federal Circuit, this evidence sufficiently established that Limelight directed and controlled its customers’ performance of each of the remaining method steps, such that all steps of the method claim were attributable to Limelight.

This new decision potentially makes it easier to enforce patents with method claims having steps performable by multiple parties.Stay tuned.

Please be aware that this publication does not contain legal advice. The views expressed in the article are provided for informational and discussion purposes and do not necessarily reflect the views of the author or of McAfee & Taft A Professional Corporation.