Supreme Court Reverses Induced Infringement Standard Articulated By Federal Circuit
By ROBIN MCGRATH & DAVID GANN
On June 2, 2014, the Supreme Court issued a unanimous opinion in Limelight Networks, Inc. v. Akamai Technologies, Inc.,
Claims for induced infringement often arise in the context of method or process claims, which recite a series of steps or acts. Method claims are commonly used in connection with software or Internet applications.
In _Akama_i, an en banc panel of the Federal Circuit held that where all steps of a method claim are performed by multiple actors, a party could be liable for induced infringement
In a long-awaited decision, the Supreme Court rejected this expansion of induced infringement, indicating that the Federal Circuit’s conclusion that direct infringement “can exist independently of a violation of” the Patent Act “fundamentally misunderstands what it means to infringe a method patent.”
The Court found no merit to Akamai’s argument that “tort law imposes liability on a defendant who harms another through a third party, even if that third party would not himself be liable,” and thus “it should not matter that no one is liable for direct infringement in this case.”
Citing to other sections of the Patent Act, the Court stressed that “when Congress wishes to impose liability for inducing activity that does not itself constitute direct infringement, it knows precisely how to do so.”
Notably, the Supreme Court was very careful to limit its opinion to the precise issues related to induced infringement under §271(b), expressly declining to review “today” the “merits of the Federal Circuit’s Muniauction rule for direct infringement under §271(a).” Instead, it noted on several occasions that it was merely “[a]ssuming without deciding”
If you have any questions concerning these developing issues, please do not hesitate to contact any of the following Paul Hastings Atlanta lawyers:
[i] Limelight Networks, Inc. v. Akamai Technologies, Inc., 572 U.S. ___, 2014 WL 2440535 (2014).
[ii] Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1309 (Fed. Cir. 2012).
[iii] Induced infringement is set forth in 35 U.S.C. §271(b): “Whoever actively induces infringement of a patent shall be liable as an infringer.”
[iv] Direct infringement is set forth in 35 U.S.C. §271(a): “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”
[v] Akamai Technologies, Inc. v. Limelight Networks, Inc., 692 F.3d 1301, 1309 (Fed. Cir. 2012) (“[T]here is no reason to immunize the inducer from liability for indirect infringement simply because the parties have structured their conduct so that no single defendant has committed all the acts necessary to give rise to liability for direct infringement.”).
[vi] Limelight, 2014 WL 2440535, at *4.
[vii] Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008).
[x] Id. at *6.
[xii] Id. at *5.
[xiv] See, e.g., id. at *4.
[xv] Id. at *7.
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