Step Performed by Defendant’s Customers Attributable to Defendant Results in Method Claim Infringement

UntitledOn August 13, 2015, the en banc Federal Circuit unanimously set forth the law of divided infringement under 35 U.S.C. § 271(a), and held there is direct infringement of a method claim when some of the steps are performed by actors other than the defendant so long as the other actors are subject to the defendant’s direction or control.  Akamai Technologies, Inc. v. Limelight Networks, Inc., en banc, Fed. Cir. No. 2009-1372, 8/13/2015.

The plaintiff, Akamai Technologies, Inc. (“Akamai”), owned a patent directed at a method for delivering website content efficiently by delivering graphical material to a wide network of servers. One of the steps in the method patent required content providers to tag the graphical elements.  Both direct and indirect infringement required a finding that direct infringement occurs when all the method steps are performed by or attributable to a single entity.

In the en banc opinion, the Federal Circuit held that when more than one actor practices the method steps, one entity is responsible for another’s performance of method steps when the entity directs or controls the performance of the other. Consequently, divided infringement under Section 271(a) is defined to be no longer limited to solely principal-agent relationships, contractual arrangement, and joint enterprise but now also includes an additional category regarding “control and direction.”  However, the scope of directing or controlling the acts of one or more third parties that constitutes direct infringement is a question of fact.

Therefore, the court explained that because in Akamai  the customer contract between Limelight and its customers required the customer to perform the “tagging step” covered by the Akamai method claim, the acts of Limelight’s customers were attributable to Limelight.