United States: Federal Circuit's En Banc Decision In Akamai v. Limelight Results In Expansion Of Divided Infringement

Last Updated: August 21 2015
Article by Carl P. Bretscher and Song Jung

The US Court of Appeals for the Federal Circuit, sitting en banc, has expanded the scope of divided infringement (sometimes called joint or split infringement), a form of direct infringement in which the steps of a method claim are being performed by different parties.1 Akamai Techns., Inc. v. Limelight Networks, Inc., Nos. 2009-1372, 1380, 1416, 1417 (Fed. Cir. Aug. 13, 2015) (en banc). The case involves methods of delivering electronic data over a content delivery network, wherein performance of the claim steps was divided between Limelight and its customers.

In 2008, a jury found Limelight liable for patent infringement and awarded Akamai $45.5 million in damages.  The district court overturned the jury's verdict and found Limelight could not directly infringe the method claims because Limelight itself did not perform all of the claim steps or exercise sufficient control over its customers' performance of the remaining steps to be held liable for their actions.  Akamai v. Limelight, 614 F. Supp. 2d 90 (D. Mass. 2009). The Federal Circuit reversed, and held that Limelight could be liable for inducing infringement even though no single party was performing, directly or vicariously, every claim step. Akamai v. Limelight, 692 F.3d 1301 (Fed. Cir. 2012) (en banc). The US Supreme Court reversed the Federal Circuit by holding that there can be no inducement where there is no direct infringement. Limelight Networks, Inc. v. Akamai Techns., Inc., 134 S. Ct. 2111 (2014).

The Supreme Court recognized, however, that its holding may "permit[] a would-be infringer to evade liability by dividing performance of a method patent's steps with another whom the defendant neither directs nor controls." (Id. at 2120.) The court encouraged the Federal Circuit "to revisit" this question on remand, because the lower court may have previously "erred by too narrowly circumscribing the scope of [direct infringement of a method claim]." (See id. at 2119-20.)

In other words, where the Federal Circuit in its 2012 decision had sought to expand the law of induced infringement while leaving direct infringement untouched, the Supreme Court restored the previous law of inducement while suggesting that the Federal Circuit, on remand, expand direct infringement when the steps of a method claim are being performed by more than one party.

The Federal Circuit, again sitting en banc, expanded liability for divided infringement by loosening the standards by which a party may be held responsible for the actions of another. Previously, divided infringement required that the parties performing the method steps must be in a principal-agent relationship, parties to a contractual arrangement or members of a joint enterprise. (Slip Op. at 6.) Under Akamai, divided infringement may also be found "where that entity directs or controls others' performance," as when an alleged infringer "conditions [another party's] 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." (Id. at 5.) Vicarious direction or control may also be found, as before, when one party "acts through an agent (applying traditional agency principles) or contracts with another to perform one or more steps of a claimed method." (See id.)

The Federal Circuit also set forth a four-part test for determining when two or more actors form a "joint enterprise," such that one actor can be held responsible for the actions of the other actor(s) as if it were performing all of the claim steps itself. A joint enterprise requires proof of: (1) an agreement, express or implied, among the members of the group; (2) a common purpose to be carried out by the group; (3) a community of pecuniary interest in that purpose, among the members; and (4) an equal right to a voice in the direction of the enterprise, which gives an equal right of control. (Slip Op. at 5-6.) Although the Federal Circuit had previously recognized that a joint enterprise may give rise to liability for divided infringement, Akamai represents the first time the court has expressly described the elements for proving the existence of such an enterprise.

The Federal Circuit proceeded to find that Limelight's direction and control over its customers' performance of certain claim steps ("tagging" and "serving") was sufficient for it to be held accountable for their actions. In particular, Limelight requires that its customers perform the claimed tagging and serving steps in order to use its content delivery network and to integrate their webpages with Limelight's hostname. Limelight also instructs its customers on how to use its services, and provides a technical account manager, engineering support and quality assurance testing to its customers. If a customer does not follow Limelight's instructions, which include tagging, it will not be able to use its services. (Slip Op. at 7-9.) "In sum, Limelight's customers do not merely take Limelight's guidance and act independently on their own. Rather, Limelight establishes the manner and timing of its customers' performance so that customers can only avail themselves of the service upon their performance of the method steps." (Id. at 9.) Limelight's vicarious accountability for its customers' actions, coupled with its own performance of the other claim steps, made it liable for infringement of the method claims. The Federal Circuit again reversed the district court's judgment of non-infringement as a matter of law, reinstated the jury's original infringement verdict and damages award, and returned the case to the panel for resolution of all residual issues consistent with its opinion.

The Akamai decision is of particular interest to makers and sellers of electronic devices and software because their products and services, by their nature, may involve performance of certain method steps by their customers, suppliers, subcontractors or other related parties. Akamai should also be reviewed in connection with another recent en banc decision, in which the Federal Circuit held that the US International Trade Commission's jurisdiction may extend to products that are not infringing at the time of importation, but may be made to infringe after importation by a customer or other party. Suprema, Inc. v. International Trade Comm'n, No. 2012-1170 (Fed. Cir. Aug. 10, 2015) (en banc). The accused products in Suprema were fingerprint scanners and their associated software development kits, which were being used by US customers after importation to develop custom software that operated the scanner in an infringing manner. (See the Dentons client alert of August 13, 2015, " Federal Circuit authorizes ITC to bar imports that may or may not be used to infringe.") Akamai and Suprema are both instructive in understanding when a party may be liable for the actions of its customers or other third parties.


1 Apparatus claims are not subject to divided infringement because a party that installs the final component in the US to make the claimed apparatus, or that sells, offers to sell or imports the completed apparatus into the US, is a direct infringer, regardless of whether another party made, assembled or supplied the other components.

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.

Events from this Firm
24 Oct 2017, Seminar, Washington, DC, United States

The Dentons Forum for Women Executives invites you to join us for a luncheon featuring guest speaker Liza Mundy, journalist and author. Ms. Mundy recently released her latest book, Code Girls, the riveting untold story of more than 10,000 spirited young American women who cracked German and Japanese codes to help win World War II.

27 Oct 2017, Seminar, New York, United States

Please join us for a milestone event, our 10th annual CLE Seminar for In-House Counsel.

1 Nov 2017, Seminar, Washington, DC, United States

Celebrate the 58th anniversary of Dentons' Government Contracts practice

In association with
Related Video
Up-coming Events Search
Font Size:
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
Confirm Password
Mondaq Topics -- Select your Interests
 Law Performance
 Law Practice
 Media & IT
 Real Estate
 Wealth Mgt
Asia Pacific
European Union
Latin America
Middle East
United States
Worldwide Updates
Check to state you have read and
agree to our Terms and Conditions

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.


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.


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 by clicking here .

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.


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.


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.


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.


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.