Practice Points
- Federal Circuit finds Limelight liable for direct infringement even though Limelight’s customers performed certain steps of Akamai’s patented process.
- Defendants may be liable as direct infringers if they “direct or control” actions of a third party, including by: (1) conditioning participation in an activity or receipt of a benefit upon performance of a step of a patented method, and (2) establishing the manner or timing of the performance.
- Although the opinion is limited to a specific set of facts, the Federal Circuit is clear that different, yet-to-be analyzed factual scenarios may warrant a finding of divided infringement. Thus, companies should continue to assess the risk of liability resulting from the sale of products that may be used by customers, and other third parties, to practice patented processes.
Background
In this latest chapter of a long-running litigation involving the direct infringement of patent claims involving multiple actors, the U.S. Court of Appeals for the Federal Circuit recently concluded that a defendant can be liable for direct infringement when it “conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.” Akamai Techs., Inc. v. Limelight Networks, Inc., No. 2009-1372, at *5 (Fed. Cir. Aug. 13, 2015) (en banc). The en banc decision vacated a May 13, 2015 panel decision holding that Limelight was not liable because the “single entity rule” for liability in divided infringement situations was not met. See BMC Res., Inc. v. Paymentech, LP, 498 F.3d 1373 (Fed. Cir. 2007). This latest decision appears to hinge on the specific facts of the case, particularly the nature of the relationship between Limelight and its customers. Thus, the full scope of the divided infringement doctrine remains undefined, and will require further clarification in future decisions.
Akamai’s CDN Technology:
In the latest decision, the Federal Circuit again considered whether a defendant is liable for direct infringement under 35 U.S.C. § 271(a) when multiple actors carry out the required steps of a patented process – also referred to as “divided infringement” situations. Divided infringement claims arise where complex process inventions are carried out in a distributed manner, such as over computer networks or through commercial activity, and two or more actors carry out various steps in the claimed process.
The patent-in-suit, U.S. Patent No. 6,108,703 includes method claims directed to an Internet content delivery service, which delivers the base document of a web site from a content provider's storage, while data-intensive components such as photographs and video are stored on a Content Delivery Network (“CDN”). Because CDNs allow for the storage of information at multiple geographical locations, they provide faster delivery of content over the Internet to website visitors.
The ‘703 patent includes the step of “tagging at least some of the embedded objects of the page so that requests for the objects resolve to the domain instead of the content provider domain.” Claim 34 from the ‘703 patent is set out fully below:
34. A content delivery method, comprising:
distributing a set of page objects across a network of content servers managed by a domain other than a content provider domain, wherein the network of content servers are organized into a set of regions;
for a given page normally served from the content provider domain, tagging at least some of the embedded objects of the page so that requests for the objects resolve to the domain instead of the content provider domain;
in response to a client request for an embedded object of the...
