Blog March 23, 2020
"Single Entity Rule" Governs Liability for Direct Infringement of Method Claims
- Person title
Akamai Technologies, Inc. v. Limelight Networks, Inc., ___F.3d ___ (Fed. Cir. May 13, 2015) (Prost, LINN, Moore (dissenting)) (D. Mass: Zobel) (5 of 5 stars)
On remand from the Supreme Court, Federal Circuit affirms judgment of noninfringement.
Section 271(a) establishes direct infringement liability for a method claim where, and only where, all steps of the claimed method are "performed by or attributed to a single entity—as would be the case, for example, in a principal-agent relationship, in a contractual arrangement, or in a joint enterprise." Slip op. at 6-7. The statute does not incorporate joint tortfeasor liability, i.e., liability for one who intentionally causes another entity to take some act, but does not actually perform the act itself. Such is required by the statute itself, and by the "single entity rule" of BMC and Muniauction. Although numerous conflicting theories of joint liability existed when the statute was enacted, Congress opted to enact only those codified in sections 271(b) and (c), and it was inappropriate to stretch section 271(a) to include more of them, especially because this might also render sections 271(b) and (c) redundant. Moreover, the dissent's proposed rule is inconsistent with the common law principles it purports to rely on and has the odd effect that adding a limitation could cause more parties to be liable for infringement.
There was no liability under the single-entity rule. There was no dispute that Limelight was not itself performing certain steps of the claimed method. To the extent Limelight's customers were performing any of the claimed steps, there was no evidence that they did so as Limelight's agents or in any way vicariously attributable to Limelight. Language in Limelight's standard form contract explaining the steps customers will have to perform if they elect to use Limelight's service did not actually obligate the users to perform the steps. "Because the customers were acting for their own benefit, Limelight is not vicariously liable for the customer's actions." Slip op. at 28.
Dissent: Judge Moore would have found Limelight responsible for the acts of its users, as Limelight required users to perform certain steps before they could use Limelight's service and because Limelight and its users shared a common plan to make content available on the Internet. In Judge Moore's view, the Federal Circuit should act en banc to confirm that section 271(a) attaches direct infringement liability to "joint infringers—multiple entities acting in concert pursuant to a common plan or purpose (joint tortfeasors)." Dissent at 11.
The opinions expressed are those of the authors on the date noted above and do not necessarily reflect the views of Fish & Richardson P.C., any other of its lawyers, its clients, or any of its or their respective affiliates. This post is for general information purposes only and is not intended to be and should not be taken as legal advice. No attorney-client relationship is formed.
Blog November 4, 2019
Legal Alert: Arthrex, Inc. v. Smith & Nephew, Inc. - What Did the Federal Circuit Do?
Blog November 4, 2019
Legal Alert | Arthrex, Inc. v. Smith & Nephew, Inc. — What Did the Federal Circuit Do?
Blog August 17, 2018
En Banc Federal Circuit: Patentee's Service of Complaint, Followed by Voluntary Dismissal, Triggers IPR Clock
Blog October 5, 2017
Legal Alert: Federal Circuit Faults PTO's Approach to Claim Amendments During IPR, But Allows PTO to Try to Fix the Problem
Blog May 16, 2016
Software Claims Directed to Specific Improvements in Computer Operations May be "Non-Abstract"
Blog May 2, 2016
Corporate Residence Definition in Patent Cases Unchanged by Congressional Revisions to Venue Statute; Minimum Contacts Under Beverly Hills Fan Reaffirmed
Blog April 11, 2016
Claims Directed to Detection of Gene Variants Patent-Ineligible, Notwithstanding Mental Activity Requirement
Blog July 27, 2015
Judicial Review Available for Decision that a Patent Qualified for CBM Review; § 101 Review Appropriate in CBM Review
Blog July 8, 2015
Software Claim Addressing Concepts Long Known in Other Fields and Lacking Other Inventive Concept Is Not Patent Eligible
Article December 27, 2022
Senior Principal John Dragseth Authors IPWatchdog Article "Top Federal Circuit Decisions of 2022 That No One Told You About"
Blog July 6, 2021
Federal Circuit Finds Digital Camera an Abstract Idea
Blog June 24, 2021
Legal Alert: What to Know about the Supreme Court's Arthrex Decision
Blog June 22, 2021
Legal Alert: Supreme Court Issues Opinion in U.S. v. Arthrex
Article January 4, 2021
Fish Attorneys Author Law360 Article, "Lessons For 2021 From Fed. Circ. Post-Grant Review Cases"
Blog November 13, 2020
Federal Circuit Panel Holds Hatch-Waxman Venue Under the Second Prong of § 1400(b) is Based on Actions Related to ANDA Submission
Q&A November 12, 2020
Q&A with Riqui Bonilla and Nitika Gupta Fiorella for Corporate Counsel Business Journal
Article September 1, 2020
Fish Attorneys Author Biosimilar Development Article, "An Update On 2020 U.S. Biosimilars Regulation & Litigation"
Article July 7, 2020
Fish Attorneys Author Article in Bloomberg Law, "INSIGHT: SCOTUS Decision on Computer Fraud Act Could Impact Trade Secrets"
Blog June 26, 2020