On Monday the Supreme Court denied certiorari in Limelight Networks Inc. v. Akamai Technologies Inc. et al, Case No. 15-993. Limelight had petitioned the Court in January, urging for review of the Federal Circuit’s en banc August 2015 decision to enlarge the theory of direct infringement, even when multiple parties perform different steps of a claimed method.
The en banc decision reinstated of a $45.5 million jury verdict against Limelight for patent infringement based on a suit of cases originally brought by Akamai in 2006. At issue was U.S. Patent No. 6,108,703, directed to methods of delivering internet content.
The denial lets stand a relatively new theory of direct infringement in situations of divided activity. Liability under 35 U.S.C. § 271(a) can now be found “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.” The court found that Limelight directed or controlled its customers’ performance of a subset of method steps, such that all steps of the method were attributable to Limelight. This expanded definition of attribution is favored by the life sciences industry, where showing infringement of diagnostic method claims often requires the combined actions of doctors, nurse practitioners, patients, hospitals and diagnostic laboratories.
Mayo v. Prometheus has pushed claim drafters to couple sampling and diagnosing steps with treatment steps. This poses a challenge on the enforcement side, as a single entity does not necessarily perform all such steps. Akamai supports establishing direct infringement, even when different parties perform subsets of claim limitations. Attribution arises in many technological contexts including, e-commerce (merchant and customer), cloud computing (provider and user), electronic communications (sender and receiver), pharmaceutical products (maker and user), and medical treatments (doctor and patient).
In Eli Lilly v. Teva, a patient’s actions were found attributable to a doctor. The court cited Akamai, reasoning that conditional or incentivized participation directly infringed the asserted method claims of U.S. Patent No. 7,772,209. Performance of all the claimed steps, including the patient’s self-administration of folic acid, could be attributed to a single person, i.e. the physician.
As Akamai deals with methods directed to e-commerce technology, it is unclear how the law will shape decisions involving the pharmaceutical and biotechnology industries. In March, Sequenom petitioned the Court to review the subject-matter eligibility of method claims in U.S. Patent No. 6,258,540. Infringement of those claims is not currently at issue; however, the claims recite obtaining a sample, amplifying DNA in the sample, and performing analysis and detection of the amplified DNA. There is no treatment step, but it is arguable that the sampling, amplifying and analysis steps could be performed by different entities, such as a phlebotomist, a hospital technician, and a physician. The intact Akamai law suggests that claims of this sort, involving joint actors, will not encounter split infringement problems.
[1]Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1023 (Fed. Cir. 2015) (en banc).
[1] Mayo Collaborative Servs. v. Prometheus Labs., Inc., 132 S. Ct. 1289 (U.S. 2012).
[1] Eli Lilly, 2015 WL 5032324, 14-16.
