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.

Microsoft Lists All Patents on the Web - The Knowledge Trap

On March 28, 2013, Brad Smith, Microsoft's GC and Executive VP, Legal and Corporate Affairs, mentioned in Enhancing Transparency: Putting Microsoft's Patents on the Web that Microsoft has published information (e.g., patent number, title, and country) regarding all Microsoft owned patents on the Web. The actual content of the patent will be available through the US patent databases (e.g., USPTO, Google Patent Search, and Free Patents Online).

From Mr. Smith's post: "Today, we launched a “Patent Tracker” tool that provides a list of all of the patents Microsoft owns. Through the Patent Tracker, users can obtain the list in two forms: (1) an online list that is searchable by patent number, patent title, country and whether the patent is held by Microsoft or a subsidiary, and (2) a CSV file containing the entire list that is downloadable and searchable in Microsoft Excel. We took this approach so that people can come to our site if they want to run a quick search, but can also download the information if they want to perform deeper analysis. Above is a video providing additional information about the need for transparency and how to use the Patent Tracker.

We take this step today because we believe that all stakeholders of the U.S. patent system – private companies, the U.S. Patent and Trademark Office, Congress and the courts – share responsibility for taking steps to improve its operation. Sensible improvements to the patent system, such as increasing transparency on patent ownership, will yield tangible outcomes that enhance American competitiveness, create jobs and foster growth in nearly every sector of the U.S. economy.

We urge other companies to join us in making available information about which patents they own. By doing so, they will help increase transparency, facilitate licensing, and help ensure that the patent system continues to fulfill its role in promoting and encouraging innovation."

Joff Wild of Intellectual Asset Management states Microsoft's aim to bring greater transparency to their holdings should be welcomed. And in my opinion, downloading a list with numbers, titles, and countries of 41,000 patents shouldn't translate into being imputed with knowledge of any given patent. However, what's logically next? If you review a relevant patent on the list as it may generate the need for a patent license or a opinion that the patent is not infringed or invalid. And if infringement is later found and the opinion is held incompetent, that knowledge increases the risk of willful infringement and  increased damages. This is suggested since In re Seagate Technology held establishing willful infringement requires the patent owner show (1) the infringer acted despite an objectively high likelihood its action constituted infringement; and (2) the risk was known or so obvious it should have been known.

Copyright © 2013 Robert Moll. All rights reserved.

Eolas Web Browser Plug-in Patent Falls Short?

Joe Mullin's article Patent troll takes last shot at owning "interactive web," but falls short reminds us high stakes patent litigation often involves multiple defendants and can stretch on for years. Mr. Mullin's article is about the Eolas patent involving browser plug-ins asserted against Microsoft in 1999 and later many other tech companies. The subject matter is described in U.S. Patent Nos. 7,599,985 and 5,838,906.

I tuned into the case after a federal court awarded Eolas and the University of California $565 million for Microsoft's browsers infringement of the Eolas patent in 2004. I was hunting for a topic at the time, because U.C. Berkeley had invited me to speak in exchange for three nights at the Lair of the Bear family camp. Since the University of California stood to gain major money, and it involved the Web and Microsoft, the Eolas case sounded like a good topic. The University of California agreed and gave us a "speaker's cabin" with a faded tie dyed sheet door.

Oh well, the food was excellent, we met lots of great people, and to my surprise many showed up to hear me talk about patents at night. The question asked repeatedly was how much did the U.C. Regents stand to gain? 25% of $565 million! Everybody seemed happy to hear this.

Afterward Microsoft fought hard to overturn the judgment eventually settling with Eolas. The U.C. Regents part was reduced to a little over $30 million. After Eolas sued a number of tech companies which recently led to the patent being held invalid despite previously overcoming invalidity challenges from Microsoft in the courts and the PTO.

If you are interested in the Microsoft case, here's a link to my power point slides: Microsoft ordered to pay $565 million for infringing Eolas & UC's web browser patent. By Robert Moll Patent Planet July 11-13, 2004.

Copyright © 2012 Robert Moll. All rights reserved.

SEO by the Sea - Web Search Patents & Articles

In the 1990's I attended a dinner where a computer scientist (unnamed) gave a presentation about the Internet. The thrust of his presentation was he had brought the Internet to the USA. As he described his role, it became apparent he had little to do with it. Instead, it sounded like he was instructed step-by-step how to connect his computer located in the Bay Area to the Web. After I left the dinner, I couldn't stop laughing as my friend mimicked his self-inflating presentation: how he, and he alone, had brought the Internet to the US. Later I read Weaving the Web, and learned about the origin of the Web and the inventor actually responsible for the original design and destiny of the Web, Tim Berners-Lee. In reading that book, O'Reilly's HTTP: The Definitive Guide, Professor Comer's The Internet Book, Castro's HTML 4, and Steven's TCP/IP Illustrated, as well as building my web site, and working with clients on web applications, my interest grew. It's difficult to not take it for granted now, but I still find something so cool about all the world's computers connected in a Web.

Given my interest when Google led me to Bill Slawski's SEO by the Sea blog, I felt compelled to visit it, and see why a SEO blog would be flagged by Google patent alerts. It was surprising in a good way. It's a large and highly organized collection of  literature on search engines and SEO. Mr. Slawski's blog notes he has spent the last six years gathering, reviewing, and discussing patent filings, white papers, and academic literature on search engines, how web pages are ranked, and how a web site and/or blog operator can optimize or at least avoid being penalized by the search engine operators. It's worth a look if you have an interest in how Web search, patents, and SEO intersect.

Copyright © 2012 Robert Moll. All rights reserved.