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En Banc Federal Circuit Will Address Liability of Multiple Parties Who Perform Steps of Method Claim

April 20, 2011

The Federal Circuit on Apr. 20 agreed to address en banc the scope of infringement liability where multiple parties perform separate steps of a method claim (Akamai Technologies Inc. v. Limelight Networks Inc., Fed. Cir., No. 2009-1372, en banc order 4/20/11).

Taking up an issue that has become a point of contention among some judges recently, the court will examine the nettlesome problem posed where parties in combination perform the steps of a claimed method, but no single party performs every claimed step.

Akamai’s Interactive Method Patent Found Not Infringed.

In the panel decision below, the court on December 20, 2010, ruled “as a matter of Federal Circuit law that there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.” Akamai Technologies Inc. v. Limelight Networks Inc., 629 F.3d 1311 (Fed. Cir. 2010). It found that neither scenario occurred here, and that defendant Limelight Networks was not liable for infringement since it did not perform the claimed “tagging” and “serving” method steps of Akamai’s website content delivery service patent (6,108,703).

Akamai and the Massachusetts Institute of Technology petitioned the court for an en banc rehearing, which was granted Apr. 20. In granting en banc review, the per curiam court vacated the December panel decision.

The court directed the parties to brief the following question:

If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?

Newman: En Banc Review Needed Since Interactive Method Claims Are at Risk.

The question of liability where multiple parties perform separate steps of a method claim has become a growing issue of concern and was loudly voiced last week by Judge Pauline Newman in (McKesson Technologies Inc. v. Epic Systems Corp., Fed. Cir., No. 2010-1291, 4/12/11).  There, Judge Richard Linn, who also authored the Akamai panel decision, found that a method of facilitating communications between healthcare providers and patients was not infringed because the plaintiff was unable to show that any single party directly infringes the patent by performing all of the claimed steps.
Linn’s McKesson opinion was joined by Judge William C. Bryson, who agreed that the ruling in was correct in light of the decisions in and Akamai, BMC Resources Inc. v. Paymentech L.P., 498 F.3d 1373 (Fed. Cir. 2007), and Muniauction Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). Bryson, however, cautiously added: “[w]hether those decisions are correct is another question, one that is close enough and important enough that it may warrant review by the en banc court in an appropriate case.”

This apparently is the right case, and it could not have come sooner to please Newman. In her dissenting opinion in McKesson, Newman argued that the rule that a single entity must perform all the steps of a method is at odds with the Patent Act and case law and warrants en banc review.

Newman explained:

All but the first step are performed by or controlled or directed by the health-care provider. The court today holds that the claim cannot be infringed as a matter of law, on the theory that a “single-entity rule” is violated because the provider does not control or direct the patient who initiates the communication, in that the patient is neither the agent of the health-care provider nor contractually obligated to initiate the communication. Maj. Op. at 8-9. There is no such rule of law.

Continuing, Newman said that the court’s recent rulings make it so that interactive methods can never be infringed, and, thus, removes them “from the purview of the patent system.”

Akamai’s en banc brief is due in 45 days.

Akamai and MIT were represented by Donald R. Dunner of Finnegan, Henderson, Farabow, Garrett & Dunner, Washington, D.C., and by Robert S. Frank Jr. of Choate, Hall & Stewart, Boston.

Limelight was represented by Robert G. Krupka of Kirkland & Ellis, Los Angeles.


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