Supreme Court Grants Certiorari in Limelight Networks, Inc. v. Akamai Technologies, Inc. (12-786)

By: Chris Bezak

On January 10, 2014, the Supreme Court granted certiorari in Limelight Networks, Inc. v. Akamai Technologies, Inc. (12-786), which raises the question of divided (or joint) infringement.  At issue is whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a).

Patentee Akamai owns U.S. Patent No. 6,108,703 directed to a method of delivering Internet content by storing portions a content provider’s web page on a network of ghost servers and modifying the web page to redirect web browser requests for the stored portions to the ghost servers, thereby efficiently accessing the web page.  Limelight provides access to a similar private network of servers storing portions of content providers’ web pages, but instructs its customers to modify their web pages as necessary to redirect the browser requests.

In an en banc decision overruling BMC Resources, Inc. v. Paymentech, L.P. (holding that a finding of induced infringement requires a single party commit all the acts constituting infringement), although neither Limelight nor its customers performs all the steps of the method, the Federal Circuit reversed and remanded a district court motion for judgment as a matter of law of non-infringement and held that Limelight could be liable for induced infringement under 35 U.S.C. § 271(b) even though a single party does not directly infringe under 35 U.S.C. § 271(a) by performing all the steps of Akamai’s patented method.

The loosening of the standard for induced infringement by the Federal Circuit is rooted in equity: “a party who performs some of the steps itself and induces another to perform the remaining steps that constitute infringement has precisely the same impact on the patentee as a party who induces a single person to carry out all of the steps,” and thus a decision upholding the ruling would provide an equitable expansion of patentees’ avenues for assertions of inducement liability.  On the other hand, reverting to the rationale of BMC Resources and its progeny would provide a more rigid, bright-line resolution to the controversial issue of divided infringement.

A decision is expected to be rendered towards the end of the Supreme Court’s term.