Posts Tagged: "indirect infringement"

Akamai argued Limelight ”provides instructions and offers technical assistance” to its customers regarding how to tag. The Federal Circuit dodged the question about whether there was direct infringement under 35 U.S.C. 271(a), but instead found that there was induced infringement under 35 U.S.C. 271(b). The problem with this ruling was that it was a legal impossibility. Well settled law had long stood for the proposition that there can be no induced infringement if there is not indirect infringement. Thus, this bizarre ruling by the Federal Circuit had those in the patent community scratching their head. It was easy to predict a Supreme Court reversal.

Recently the Federal Circuit has been interpreting 25 U.S.C. 271(b) to mean that unless the accused infringer directs or controls the actions of the party or parties that are performing the claimed steps, the patentee has no remedy, even though the patentee’s rights would be plainly being violated if the actions of the various partiers were combined. The Federal Circuit decided to go a different route and broke with that line of cases, specifically saying: “We now conclude that this interpretation of section 271(b) is wrong as a matter of statutory construction, precedent, and sound patent policy.” But there were 5 of the 11 Federal Circuit Judges dissenting, and very adamantly so.

Mirror Worlds also alleged that Apple induced its customers to infringe claim 13. The infringement theory in play here is called inducement and is found in 35 U.S.C. § 271(b): a party who “actively induces infringement of a patent shall be liable as an infringer.” Inducement, however, requires that there be a showing of an underlying act of direct infringement. This does not require that Apple themselves engaged in direct infringement, otherwise direct infringement and inducement would be one and the same theory, which they are not. Nevertheless, in order for there to be inducement each and every step of the claim in question must be performed.

In challenging the correctness of the per curiam majority ruling, Judge Linn’s dissenting opinion makes four points. Point No. 1 is that the per curiam majority’s approach “is contrary to both the Patent Act and the Supreme Court’s longstanding precedent that “if there is no direct infringement of a patent there can be no contributory infringement,” citing Aro Manufacturing and Deepsouth Packing, as well as the Federal Circuit’s Joy Technologies. But as discussed above, none these cases specifically holds that direct infringement of the claimed method for the purposes of liability for indirect infringement requires that all steps of the claimed method must be performed by a single actor. Judge Linn’s further assertion that, in enacting 35 U.S.C §§ 271(e)(2), (f), and (g), “Congress did not give the courts blanket authority to take it upon themselves to make further policy choices or to define ‘infringement’” still doesn’t address why direct infringement for the purposes of indirect infringement liability requires all infringing acts to be performed by a single actor. (As I discuss below, enactment of 35 U.S.C §§ 271 (f) and (g) also reflects Congress’ intent to close “loopholes” in the primary infringement statute, 35 U.S.C §§ 271 (a)). Judge Linn also makes the comment that Congress “removed joint-actor patent infringement liability from the discretion of the courts” in 1952, but cites to absolutely no legislative history to support this comment.

In Akamai Technologies and McKesson Technologies (August 31, 2012), with an opinion over 30 pages long, a bare six judge per curiam majority found it unnecessary to resolve the joint infringement issue. Instead, the per curiam majority ruled that the Akamai Technologies and McKesson Technologies cases should be resolved by applying the doctrine of inducing (indirect) infringement under 35 U.S.C § 271(b). The majority also ruled that such indirect infringement could occur as long as all steps of the a claimed method are performed, but didn’t requiring that all steps be performed by a single actor, expressly overruling the 2007 case of BMC Resources v. Paymentech, and at least implicitly overruling the 2008 case of Muniauction, Inc. v. Thomson Corp. (no joint infringement of patented electronic method for conducting auctions of financial instruments where auctioneer and bidder each perform some but not all of the steps).