Limelight v Akamai And Indirect Patent Infringement In Canada

Recently, in Limelight Networks Inc v Akamai Technologies Inc et al ("Akamai"), 134 S Ct 2111 (2014), the U.S. Supreme Court ruled that one cannot be liable for inducing infringement of a U.S. patent when no one has directly infringed that U.S. patent. "Inducing infringement" and other forms of indirect patent infringement are of interest to patentees in situations such as that in Akamai, where multiple parties may together perform the subject matter of a single claim. The U.S. Supreme Court decision in Akamai offers an interesting opportunity to compare Canada's laws on indirect infringement to those of its neighbour.

Statutory basis

The United States Patent Act provides that infringement occurs when an entity makes, uses, offers to sell, sells, or imports any patented invention within the United States during the term of the patent. "Direct" infringement refers to a single party that performs all the claimed elements of a patented invention. The U.S. statute also recognizes two types of "indirect" infringement: inducing infringement (35 U.S.C. § 271(b)) and contributory infringement (35 U.S.C. § 271(c)). Inducing infringement is defined in the case law as encouraging, aiding, or otherwise causing another entity to infringe a patent, whereas contributory infringement is defined in the Patent Act as the sale, offer for sale, or importation of "a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for use in an infringement of such patent, and not ... suitable for substantial noninfringing use".

Unlike in the United States and some other jurisdictions, the concepts of "infringement", "contributory infringement" and "inducing infringement" are not explicitly referred to in the Canadian Patent Act. Rather, infringement in Canada, whether direct or indirect, is understood to mean doing anything within the exclusive rights of the patentee as defined in section 42 of the Patent Act, which provides that a patentee has the exclusive right, privilege and liberty of making, constructing, and using the invention in Canada and selling it to others to be used.

Contributory infringement in Canada

A fairly recent consideration of whether there is a cause of action for contributory infringement under Canadian law stemmed from a comment by the Supreme Court of...