Federal Circuit Expands Scope Of Divided Infringement Liability

Resolving a protracted battle regarding so-called "divided infringement," the Federal Circuit held en banc in Akamai Technologies, Inc. v. Limelight Networks, Inc., No. 2009-1372 (Fed. Cir. Aug. 13, 2015) that an entity may be liable for direct infringement of a method claim even if it does not perform all method steps, so long as it directs or controls the performance of the remaining method steps or engages in a joint enterprise to do so.

Previous case law established that an accused infringer can "direct or control" another entity where that other entity acts as the accused infringer's agent or has a contractual relationship with the accused infringer. In Akamai, the Court further held that "when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance," it may be found liable for direct infringement. Based on this principle, the court found Limelight liable for direct infringement because Limelight conditioned the use of its content delivery network on its customers' performance of two missing method steps and established the manner or timing of performance of those steps. Although the Court was not required to apply the "joint enterprise" theory, it set forth a four-factor test to determine whether such a joint enterprise exists.

This decision reaffirms the importance of method claims in any patent procurement strategy. It is also highlights the need for experienced IP counsel to assess defenses to the assertion of method claims.