Can a Patentee Establish Liability for Joint Infringement?

Direct infringement of a method patent requires a single party to perform every step of the claimed method. But what about when a patented method requires more than one party to perform the necessary steps? How can a patentee establish that a defendant is liable for such joint infringement? The U.S. Court of Appeals for the Federal Circuit gave its answer in Akamai Technologies, Inc. v. Limelight Networks, Inc.

A Tangled Web

Akamai holds three patents related to a method for storing website content. As part of the method, individual embedded objects on a website (such as videos) are stored by a hosting service. Most of the steps in the patented claims are performed by the hosting service, but the website owner generally must tag the embedded objects so they direct visitors from their websites to the hosting site to retrieve those objects. Akamai sued Limelight, a competing hosting service, for patent infringement. Because Limelight itself doesn’t perform all of the steps of the asserted patent claims (the website owners do the tagging), Akamai pursued a theory of joint infringement liability at trial. After the trial court entered a judgment of noninfringement, Akamai appealed.

Control or Direction

Joint infringement generally can’t occur unless one party exercises “control or direction” over the entire process such that every step is attributable to the controlling party. The Federal Circuit clarified that joint infringement can be found only when: 1) one party is contractually obligated to the other to perform the steps, or 2) the parties who perform the method steps have an agency relationship. Limelight’s standard form contract with its customers explains that the customer will have to perform the tagging step if they decide to take advantage of Limelight’s service for embedded objects. But, the court pointed out, the company doesn’t obligate customers to perform the step. Furthermore, the court found that customers didn’t perform the tagging as Limelight’s agents. Instead, they acted principally for their own benefit and under their own control.

Alleviating Joint Pain

The Federal Circuit offered some words of advice for patentees. Recognizing the difficulty of proving infringement of claims that must be infringed by multiple parties, it pointed out that such concerns can usually be offset by proper claim drafting. A patentee should try to structure its patent claims to capture infringement by just a single party.

About the patent law firm:

Klemchuk LLP is an Intellectual Property (IP), Technology, Internet, and Business law firm located in Dallas, TX.  The firm offers comprehensive legal services including litigation and enforcement of all forms of IP as well as registration and licensing of patents, trademarks, trade dress, and copyrights.  The firm also provides a wide range of technology, Internet, e-commerce, and business services including business planning, formation, and financing, mergers and acquisitions, business litigation, data privacy, and domain name dispute resolution. 

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