On April 18, 2016 the Supreme Court denied certiorari in Limelight Networks Inc. v. Akamai Technologies Inc. et al, Case No. 15-993. Limelight had petitioned the Court in January, urging for review of the Federal Circuit’s en banc August 2015 decision to enlarge the theory of direct infringement, even when multiple parties perform different steps of a claimed method.
The en banc decision reinstated a $45.5 million jury verdict against Limelight for patent infringement based on a suite of cases originally brought by Akamai in 2006. At issue was U.S. Patent No. 6,108,703, directed to methods of delivering internet content.
The denial lets stand a relatively new theory of direct infringement in situations of divided activity. Liability under 35 U.S.C. § 271(a) can now be found “when an alleged infringer conditions 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.”1 The court found that Limelight directed or controlled its customers’ performance of a subset of method steps, such that all steps of the method were attributable to Limelight. This expanded definition of attribution is favored by the life sciences industry, where showing infringement of diagnostic method claims often requires the combined actions of doctors, patients, hospitals and diagnostic laboratories.
Mayo v. Prometheus2 has pushed claim drafters to couple sampling and diagnosing steps with treatment steps. This poses a challenge on the enforcement side, as a single entity does not necessarily perform all such steps. Akamai supports establishing direct infringement, even when different parties perform subsets of claim limitations. Attribution arises in many technological contexts including e-commerce (merchant and customer), cloud computing (provider and user), electronic communications (sender and receiver), pharmaceutical products (maker and user), and medical treatments (doctor and patient).
In Eli Lilly v. Teva3, a patient’s actions were found attributable to a doctor. The court cited Akamai, reasoning that conditional or incentivized participation directly infringed the asserted claims of U.S. Patent No. 7,772,209, drawn to a method for administering chemotherapeutic treatment to a patient. The prescribing information required physicians to instruct patients to initiate folic acid once daily prior to the first dose of the chemotherapeutic, in accordance with the claimed methods. Performance of all the claimed steps, including the patient’s self-administration of folic acid, could thus be attributed to a single person, i.e., the physician. The court held that the claims would be infringed by Teva based on inducement of infringement by a single actor, the physician administering the chemotherapeutic.
As Akamai deals with methods directed to e-commerce technology, it is unclear how the law will shape decisions involving the pharmaceutical and biotechnology industries. In March, Sequenom petitioned the Court to review the subject-matter eligibility of method claims in U.S. Patent No. 6,258,540. The claims recite obtaining a sample, amplifying DNA in the sample, and performing analysis and detection of the amplified DNA. There is no treatment step, but it is arguable that the sampling, amplifying and analysis steps could be performed by different entities, such as a hospital technician, a laboratory and a physician. Although infringement of Sequenom’s claims is not currently at issue, the Supreme Court’s denial of Limelight’s petition leaves the Akamai law intact, suggesting that claims such as these will encounter fewer split infringement problems in the future, even when joint actors are involved.
Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1023 (Fed. Cir. 2015) (en banc).
 Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (U.S. 2012).
Gina Nellesen is a Patent Fellowship Attorney in Fish & Richardson’s Silicon Valley office. Ms. Nellesen drafts and prosecutes patents for academic institutions, corporations and emerging companies pursuing life sciences. She collaborates with scientists to capture new intellectual property and builds patent landscapes to help clients...
Dr. Lavoie is a Principal in the Silicon Valley* and Twin Cities offices of Fish & Richardson. She represents a range of clients, from industry to academia, with an emphasis on early to mid-stage companies. Her practice focuses on client counseling and strategic...