United States: Divided Infringement Steps Into The Limelight

Last Updated: June 10 2014
Article by Claire Laporte, Marco Quina and Kevin C. Conroy

Implications of Limelight v. Akamai

The United States Supreme Court ruled Monday that a defendant cannot be liable for inducing infringement unless the induced party directly infringed the patent. This means, under current Federal Circuit law, that there is no induced infringement of a method patent unless every step of the method can be attributed to a single actor. The unanimous ruling in Limelight Networks, Inc. v. Akamai Technologies, Inc. reversed an en banc ruling of the Federal Circuit.

The Limelight case began when Akamai sued Limelight for infringement of a patented method for delivering internet content. Limelight argued in defense that neither Limelight nor its customers performed all of the claimed steps; Limelight performed most of the steps and instructed its customers to perform the remaining one, a step of "tagging" web content for storage.

Limelight relied on Muniauction v. Thompson Corp., a case in which the Federal Circuit held that there can be no direct infringement of a method claim unless a single actor performs (or directs or controls) all of the steps. Direction or control may arise from an agency relationship or be imposed by contract. Because Limelight's customers were not Limelight's agents and were not contractually obligated to perform the "tagging" step that Limelight itself did not perform, under the Muniauction rule, there was no direct infringement by anyone.

Akamai had challenged the Muniauction rule in the Federal Circuit as too narrow, but that court reached its decision on other grounds. Because of that, the Supreme Court declined to address the Muniauction rule. However, in discussing Muniauction, the Court raised the "possibility that the Federal Circuit erred by too narrowly circumscribing the scope of [direct infringement under] § 271(a)." It noted that the Federal Circuit could revisit the scope of the Muniauction single-actor rule during further proceedings in Limelight, leaving the door open to alternative theories for attributing performance of all the claimed steps to a single entity.

Unless the Federal Circuit revisits the Muniauction rule, the practical impact of Limelight is that there can be no inducement liability unless a single actor performs, or directs or controls, all of the steps of the claimed method. This has significant implications for the enforcement – and hence the value – of claims drawn to methods, which have long been an important type of patent claim.

New Challenges in the Enforcement of Method Claims

The most immediate consequence of the Limelight ruling is that patent claims typically practiced by multiple actors may be difficult to enforce unless the patentee can show that one of the actors directed or controlled the activities of the others. The ruling will have broad impact on patents covering internet transactions, mobile telephony, and other distributed activities. In the life sciences, claims drawn to methods that include both diagnosis and treatment steps may be unenforceable if one person (such as a laboratory) provides or collects diagnostic information while another (a physician) treats the patient.

Patent prosecutors have long sought to avoid relying on claims that require multiple actors for infringement, but the 2012 Supreme Court ruling in Mayo v. Prometheus caused many patent prosecutors to alter that practice. In Mayo, the Court invalidated as unpatentable subject matter a method claim drawn to evaluating drug dosage. The claim might have been valid had it included the step of treating a patient in response to the evaluation, but in the wake of Monday's decision, that solution might make the claim effectively unenforceable unless the treating physician performed the diagnostic evaluation.

The Limelight ruling adds to other recently imposed hurdles to the enforcement of method claims under inducement theories. In 2011, the Supreme Court ruled in Global-Tech v. SEB that a company is not liable for inducing infringement of a method unless that company knows that the "induced acts constitute patent infringement." The Federal Circuit extended this ruling last year, holding in Commil v. Cisco that if the inducer has a good-faith belief the patent is invalid, it may lack the knowledge required by Global-Tech. These developments have increased the difficulty of proving induced infringement of method claims.

Implications for Patent Litigation

The Limelight ruling confirms the potency of defenses based on divided infringement. It will also force courts to delve into disputes over the interpretation of claim elements that are not explicit about who performs a particular step or where it is performed.

Any plaintiff seeking to enforce a method claim should consider these issues early in the case, including the extent to which problems can be avoided through claim construction. And any defendant should be alert to opportunities to take advantage of inducement defenses based on these evolving doctrines.

Parties evaluating their freedom to operate in the face of possibly relevant method claims should consider design-around strategies that avoid a single actor performing, or directing or controlling, all of the steps of the claimed method. They must be mindful, however, that such strategies may ultimately fail if the Muniauction rule is altered.

Implications for Patent Prosecution

Unless the Federal Circuit reconsiders the Muniauction rule, prudence dictates that patent practitioners draft method claims that focus on the activities of a single actor even when the invention as a whole can potentially involve multiple actors.

For example, a diagnostic method could be drafted to describe only activities performed by a laboratory, so that the claim could involve both an assessment and a treatment recommendation. Similarly, a therapeutic method could be written to include assessing diagnostic information and treating based on the assessment. In either case, the company providing the diagnostic test could be sued for inducing the direct infringement of the laboratory (in the first case) or the physician (in the second). (Under 35 U.S.C. §287(c), the physician is immune from liability for infringement, but the immunity would not bar a suit against the diagnostic company for inducing the physician's infringement).

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.

To print this article, all you need is to be registered on Mondaq.com.

Click to Login as an existing user or Register so you can print this article.

Authors
Events from this Firm
1 Feb 2018, Seminar, Boston, United States

Foley Hoag LLP and Crowe Horwath invite you to a luncheon on Thursday, February 1, 2018, at Foley Hoag’s New York office prior to the start of SBIA’s Northeast Private Equity Conference.

1 Feb 2018, Webinar, Boston, United States

Protecting the value of your corporate brand is a critical mission. As companies are increasingly asked to make disclosures regarding their efforts to address social and environmental risks, these disclosures create both opportunities and challenges for those entrusted with protecting a company’s intangible assets.

 
In association with
Related Video
Up-coming Events Search
Tools
Print
Font Size:
Translation
Channels
Mondaq on Twitter
 
Register for Access and our Free Biweekly Alert for
This service is completely free. Access 250,000 archived articles from 100+ countries and get a personalised email twice a week covering developments (and yes, our lawyers like to think you’ve read our Disclaimer).
 
Email Address
Company Name
Password
Confirm Password
Position
Mondaq Topics -- Select your Interests
 Accounting
 Anti-trust
 Commercial
 Compliance
 Consumer
 Criminal
 Employment
 Energy
 Environment
 Family
 Finance
 Government
 Healthcare
 Immigration
 Insolvency
 Insurance
 International
 IP
 Law Performance
 Law Practice
 Litigation
 Media & IT
 Privacy
 Real Estate
 Strategy
 Tax
 Technology
 Transport
 Wealth Mgt
Regions
Africa
Asia
Asia Pacific
Australasia
Canada
Caribbean
Europe
European Union
Latin America
Middle East
U.K.
United States
Worldwide Updates
Registration
Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:
  • To allow you to personalize the Mondaq websites you are visiting.
  • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
  • To produce demographic feedback for our information providers who provide information free for your use.
  • Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.
    If you do not want us to provide your name and email address you may opt out by clicking here
    If you do not wish to receive any future announcements of products and services offered by Mondaq you may opt out by clicking here

    Terms & Conditions and Privacy Statement

    Mondaq.com (the Website) is owned and managed by Mondaq Ltd and as a user you are granted a non-exclusive, revocable license to access the Website under its terms and conditions of use. Your use of the Website constitutes your agreement to the following terms and conditions of use. Mondaq Ltd may terminate your use of the Website if you are in breach of these terms and conditions or if Mondaq Ltd decides to terminate your license of use for whatever reason.

    Use of www.mondaq.com

    You may use the Website but are required to register as a user if you wish to read the full text of the content and articles available (the Content). You may not modify, publish, transmit, transfer or sell, reproduce, create derivative works from, distribute, perform, link, display, or in any way exploit any of the Content, in whole or in part, except as expressly permitted in these terms & conditions or with the prior written consent of Mondaq Ltd. You may not use electronic or other means to extract details or information about Mondaq.com’s content, users or contributors in order to offer them any services or products which compete directly or indirectly with Mondaq Ltd’s services and products.

    Disclaimer

    Mondaq Ltd and/or its respective suppliers make no representations about the suitability of the information contained in the documents and related graphics published on this server for any purpose. All such documents and related graphics are provided "as is" without warranty of any kind. Mondaq Ltd and/or its respective suppliers hereby disclaim all warranties and conditions with regard to this information, including all implied warranties and conditions of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Mondaq Ltd and/or its respective suppliers be liable for any special, indirect or consequential damages or any damages whatsoever resulting from loss of use, data or profits, whether in an action of contract, negligence or other tortious action, arising out of or in connection with the use or performance of information available from this server.

    The documents and related graphics published on this server could include technical inaccuracies or typographical errors. Changes are periodically added to the information herein. Mondaq Ltd and/or its respective suppliers may make improvements and/or changes in the product(s) and/or the program(s) described herein at any time.

    Registration

    Mondaq Ltd requires you to register and provide information that personally identifies you, including what sort of information you are interested in, for three primary purposes:

    • To allow you to personalize the Mondaq websites you are visiting.
    • To enable features such as password reminder, newsletter alerts, email a colleague, and linking from Mondaq (and its affiliate sites) to your website.
    • To produce demographic feedback for our information providers who provide information free for your use.

    Mondaq (and its affiliate sites) do not sell or provide your details to third parties other than information providers. The reason we provide our information providers with this information is so that they can measure the response their articles are receiving and provide you with information about their products and services.

    Information Collection and Use

    We require site users to register with Mondaq (and its affiliate sites) to view the free information on the site. We also collect information from our users at several different points on the websites: this is so that we can customise the sites according to individual usage, provide 'session-aware' functionality, and ensure that content is acquired and developed appropriately. This gives us an overall picture of our user profiles, which in turn shows to our Editorial Contributors the type of person they are reaching by posting articles on Mondaq (and its affiliate sites) – meaning more free content for registered users.

    We are only able to provide the material on the Mondaq (and its affiliate sites) site free to site visitors because we can pass on information about the pages that users are viewing and the personal information users provide to us (e.g. email addresses) to reputable contributing firms such as law firms who author those pages. We do not sell or rent information to anyone else other than the authors of those pages, who may change from time to time. Should you wish us not to disclose your details to any of these parties, please tick the box above or tick the box marked "Opt out of Registration Information Disclosure" on the Your Profile page. We and our author organisations may only contact you via email or other means if you allow us to do so. Users can opt out of contact when they register on the site, or send an email to unsubscribe@mondaq.com with “no disclosure” in the subject heading

    Mondaq News Alerts

    In order to receive Mondaq News Alerts, users have to complete a separate registration form. This is a personalised service where users choose regions and topics of interest and we send it only to those users who have requested it. Users can stop receiving these Alerts by going to the Mondaq News Alerts page and deselecting all interest areas. In the same way users can amend their personal preferences to add or remove subject areas.

    Cookies

    A cookie is a small text file written to a user’s hard drive that contains an identifying user number. The cookies do not contain any personal information about users. We use the cookie so users do not have to log in every time they use the service and the cookie will automatically expire if you do not visit the Mondaq website (or its affiliate sites) for 12 months. We also use the cookie to personalise a user's experience of the site (for example to show information specific to a user's region). As the Mondaq sites are fully personalised and cookies are essential to its core technology the site will function unpredictably with browsers that do not support cookies - or where cookies are disabled (in these circumstances we advise you to attempt to locate the information you require elsewhere on the web). However if you are concerned about the presence of a Mondaq cookie on your machine you can also choose to expire the cookie immediately (remove it) by selecting the 'Log Off' menu option as the last thing you do when you use the site.

    Some of our business partners may use cookies on our site (for example, advertisers). However, we have no access to or control over these cookies and we are not aware of any at present that do so.

    Log Files

    We use IP addresses to analyse trends, administer the site, track movement, and gather broad demographic information for aggregate use. IP addresses are not linked to personally identifiable information.

    Links

    This web site contains links to other sites. Please be aware that Mondaq (or its affiliate sites) are not responsible for the privacy practices of such other sites. We encourage our users to be aware when they leave our site and to read the privacy statements of these third party sites. This privacy statement applies solely to information collected by this Web site.

    Surveys & Contests

    From time-to-time our site requests information from users via surveys or contests. Participation in these surveys or contests is completely voluntary and the user therefore has a choice whether or not to disclose any information requested. Information requested may include contact information (such as name and delivery address), and demographic information (such as postcode, age level). Contact information will be used to notify the winners and award prizes. Survey information will be used for purposes of monitoring or improving the functionality of the site.

    Mail-A-Friend

    If a user elects to use our referral service for informing a friend about our site, we ask them for the friend’s name and email address. Mondaq stores this information and may contact the friend to invite them to register with Mondaq, but they will not be contacted more than once. The friend may contact Mondaq to request the removal of this information from our database.

    Emails

    From time to time Mondaq may send you emails promoting Mondaq services including new services. You may opt out of receiving such emails by clicking below.

    *** If you do not wish to receive any future announcements of services offered by Mondaq you may opt out by clicking here .

    Security

    This website takes every reasonable precaution to protect our users’ information. When users submit sensitive information via the website, your information is protected using firewalls and other security technology. If you have any questions about the security at our website, you can send an email to webmaster@mondaq.com.

    Correcting/Updating Personal Information

    If a user’s personally identifiable information changes (such as postcode), or if a user no longer desires our service, we will endeavour to provide a way to correct, update or remove that user’s personal data provided to us. This can usually be done at the “Your Profile” page or by sending an email to EditorialAdvisor@mondaq.com.

    Notification of Changes

    If we decide to change our Terms & Conditions or Privacy Policy, we will post those changes on our site so our users are always aware of what information we collect, how we use it, and under what circumstances, if any, we disclose it. If at any point we decide to use personally identifiable information in a manner different from that stated at the time it was collected, we will notify users by way of an email. Users will have a choice as to whether or not we use their information in this different manner. We will use information in accordance with the privacy policy under which the information was collected.

    How to contact Mondaq

    You can contact us with comments or queries at enquiries@mondaq.com.

    If for some reason you believe Mondaq Ltd. has not adhered to these principles, please notify us by e-mail at problems@mondaq.com and we will use commercially reasonable efforts to determine and correct the problem promptly.

    By clicking Register you state you have read and agree to our Terms and Conditions