Federal Circuit - Akamai Technologies, Inc. v. Limelight Networks, Inc. - Infringement by Inducement Requires Direct Infringement

In Akamai Technologies, Inc. v. Limelight Networks, Inc. the Federal Circuit held that the patent owner Akamai failed to prove infringement by inducement by Limelight, because Akamai failed to show direct infringement.

The Federal Circuit held that direct infringement only occurs when a single party or a joint enterprise performs all of the steps of the method. Further, encouraging or instructing others to perform an act is not the same as performing the act and will not result in direct infringement. Instead, multiple entities must be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

This case relates to U.S. Patent No. 6,108,703 (the '703 patent). It describes an invention that, among other thing, stores web pages at the content provider (web site) and stores their embedded objects at another domain closer to the client. This is one of inventor Daniel Lewins' contributions to the Web: store popular web pages at the web site so hits can be tracked, but store their embedded objects at domains closer to the browsers to reduce page latency.

Claim 19 of the '703 patent recites a content delivery service, comprising:

• replicating a set of page objects across a wide area network of content servers managed by a domain other than a content provider domain;
• for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain;
• responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and
• serving at least one embedded object of the given page from a given content server in the domain instead of from the content provider domain.

Limelight performed all the steps of claim 19 except for the step of "tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain," which it encouraged customers perform.

Such is insufficient, and the Federal Circuit explained: "In the present case, the asserted claims were drafted so as to require the activities of both Limelight and its customers for a finding of infringement. Thus, Akamai put itself in a position of having to show that the allegedly infringing activities of Limelight’s customers were attributable to Limelight. Akamai did not meet this burden, because it did not show that Limelight’s customers were acting as agents of or otherwise contractually obligated to Limelight or that they were acting in a joint enterprise when performing the tagging and serving steps. Accordingly, we affirm the district court’s grant of Limelight’s motion for JMOL of non-infringement under § 271(a)."

In general, a method claim should be written so that a single entity performs each step to avoid the requirement that the multiple entities that perform the claim be in a principal-agent relationship, a contractual arrangement, or in a joint enterprise.

Copyright © 2015 Robert Moll. All rights reserved.