Joint infringement and the US Supreme Court decision in Limelight Networks v. Akamai Technologies

August 2014 | EXPERT BRIEFING | INTELLECTUAL PROPERTY

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The recent US Supreme Court decision in Limelight Networks v. Akamai Technologies relates to joint infringement. Usually, infringement of a method or process claim in a patent occurs when one entity practices all the steps in the method or process. However, in many systems, for example communication systems, the system includes a server that is owned by one entity and client systems, Blackberrys for example, that are owned by another entity. A method or process claim, if written in the most straightforward and logical manner, would be performed in part by the entity that owns the server and in another part by the entity that owns the client system. Infringement of that method or process claim would require joint infringement, where the two entities cooperate in performing the steps of the process. Under US law, direct infringement may not be possible since present US law requires that one entity perform all the steps in the method or process unless one party is under control or direction of the other party.

Akamai owns a patent having a claim for a method for delivering electronic data using a content delivery network (CDN). Limelight operates a CDN. When Akamai sued Limelight Networks for infringement, Limelight Networks claimed noninfringement since Limelight performs all the steps of the method claim except for one. The step of ‘tagging’ is performed by the user. On appeal, the US Court of Appeals for the Federal Circuit, in a ruling including the entire court, found that, although direct infringement may not have been possible, Limelight could be liable as an inducer of infringement. As stated in the US Supreme Court decision in the US Supreme Court decision in Limelight Networks v. Akamai Technologies, the entity that owns the server cannot be considered to be inducing infringement since inducing infringement required that someone be infringing the entire claim.

Unless there is a different ruling on direct infringement, and that ruling stands the test of the US Supreme Court, patent drafters in the US will have to write separate claims-one set of claims where the actions occur only at the server and another set of claims were the actions occur only at the client. The structure of such claims is awkward, the number of claims is twice that needed otherwise, which increases the application fee, and that claim design is opposite to the claim rules for other jurisdictions, such as the EPO.

Although a situation such as that of Akamai v. Limelight has not occurred in other jurisdictions, other jurisdictions have analysed joint infringement. For example, in the UK, as stated in at least one opinion from the House of Lords, joint infringement would require a ‘common design’ or plan of the parties. The requirement of a ‘common design’ has also been used, in a more liberal form, by courts in Australia and has also by courts in Singapore.

The concept of joint tortfeasors , parties participating in the commission of a wrong that causes someone else a harm, is common to jurisdictions where the jurisprudence relates back to the UK (common law) jurisprudence and can also be found in other legal systems. We can look forward to the application of such concepts to joint infringement so that the burden on patent drafters is lifted and the enforcement of method claims resulting from the present distributed system technology is not blocked.

Orlando Lopez is a partner at Burns & Levinson LLP. He can be contacted on +1 (617) 345 3243 or by email: olopez@burnslev.com.

Orlando Lopez

Burns & Levinson LLP