The Expansion Of Direct Infringement And Its Impact On Claim Drafting

On August 13, 2015, the Federal Circuit decided en banc1 to effectively expand the scope of direct infringement under 35 U.S.C. § 271(a). Akamai Techs., Inc. v. Limelight Networks, Inc., Nos. 2009-1372, -1380, -1416, -1417 (Fed. Cir. Aug. 13, 2015) (en banc). Specifically, the court held that in cases of divided infringement, one entity could be liable under two circumstances: (1) where the entity directs or controls the other entity's performance, or (2) where the actors form a joint enterprise. More significantly, the court greatly enlarged the circumstances under which the direction or control test could be satisfied and made divided direct infringement under 35 U.S.C. § 271(a) a viable option for patent owners.

Background

Akamai sued Limelight in 2006 for infringement of several patents, including U.S. Patent No. 6,108,703 ("the '703 patent"), which claims methods of delivering content over the Internet. The claimed methods of the '703 patent require the steps of "tagging" the content with an identifier for use during delivery and "serving" the tagged content when requested. Limelight performed each step of the method, but for the tagging and serving steps. Instead, Limelight required that its customers perform those steps in order to use its service. Limelight also sent its customers a welcome letter instructing the customer how to use its service, provided step-by-step instructions for using its service, and had its engineers continuously engage with its customers' activities.

Procedural History

The jury found Limelight liable for direct infringement of the '703' patent and the district court denied Limelight's motion for judgment of noninfringement as a matter of law, ruling that Akamai had presented substantial evidence that Limelight directed or controlled its customers in performing the steps of the claimed methods that it did not perform. Before the case closed, however, the Federal Circuit issued its opinion in Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), which held that there can be no direct infringement of a method claim unless one party exercises control or direction over the entire process such that every step is attributable to the controlling party. On a motion for reconsideration, the district court granted Limelight's motion for judgment as a matter of law and reversed the jury's verdict. Limelight appealed to the Federal Circuit.

On appeal, a three-judge Federal Circuit panel affirmed that...