A person can be liable for patent infringement when he or she
makes a product that includes all the features found in the
patent's claim or claims. Similarly, a person is infringing a
patent when he or she carries out all the steps found in a patent
claim for a process. But what if a person only performs half the
steps found in a process claim, and induces another party to do the
rest? Who, if anyone, is to blame when there are many parties
involved in infringing on a patented process? Traditionally, United
States courts have required that a single party carry out all steps
before there can be liability for patent infringement. But there
may soon be new answers to these questions.
If you have streamed video online,
or even visited a popular website, it's likely that a Content
Delivery Network (CDN) was used to help provide a smooth streaming
experience. CDNs are inherently distributed systems: they involve
many replicated nodes at diverse locations, and typically involve
multiple parties such as a content provider and CDN
Distributed systems like a CDN pose
special challenges for prospective patentees. A desirable patent
claim is one that can be infringed by a single party, but, as
described above, such a claim can be difficult to craft when
considering a distributed system. Often, a claim like this has many
steps (typically required so that the claim is novel and unobvious
in view of the prior art) to be patentable. Having more steps in a
claim increases the likelihood that multiple parties are covered by
activities that fall within the claim.
Akamai Technologies faced such a
problem. Akamai obtained a US patent directed to a CDN system,
which claimed a method that involved placing content on replicated
servers, and modifying the content provider's web page to
direct browsers to the replicated servers. Limelight Networks,
which operates a competing CDN, also placed content on replicated
servers. However, in Limelight's system, it was up to the
content provider to modify the web page.
Akamai accused Limelight of inducing
infringement of its patent. Limelight argued that there was no
infringement, direct or induced, as no single party performed all
the steps claimed in the patent.
Nevertheless, a slim majority of the
Court of Appeals for the Federal Circuit broke from precedent and
found that there had been induced infringement. The Court reasoned
that requiring a single party to perform all steps of a claimed
method would allow wrongdoers to escape liability if they can
successfully divide the infringing activity among multiple
This considerably broadens the
induced infringement doctrine, as it means that now there can still
be inducement even if multiple parties are involved, so long as
they collectively perform all of the claimed steps.
The United States Supreme Court has
now taken this issue up for consideration and a decision is
expected in the coming months. Limelight, and many other companies,
argue that the looser standard espoused by the Federal Circuit
would create a great deal of uncertainty, and open up parties to
liability in unforeseen ways. This will be a case to watch.
The content of this article is intended to provide a general
guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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A recent Saskatchewan Court of Queen's Bench decision allowed a court-appointed receiver to sell and transfer intellectual property rights free and clear of encumbrances, finding that a license to use improvements of an invention was a contractual interest and not a property interest.
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