Limelight Networks Inc v Akamai, No 12–786, 572 US ____ (2014)

The central issue in this case was whether a defendant may be liable for inducing infringement of a patent under 35 U.S.C. §271(b) when no one has directly infringed the patent under §271(a).

The Court held that to prove induced infringement, there must have been direct infringement.

“Respondent the Massachusetts Institute of Technology is the assignee of US Patent No. 6,108,703 (’703 patent), which claims a method of delivering electronic data using a ‘content delivery network,’ or ‘CDN.’ Respondent Akamai Technologies, is the exclusive licensee.”

“Petitioner Limelight Networks, also operates a CDN and carries out several of the steps claimed in the ’703 patent. But instead of ‘tagging’ those components of its customers’ Web sites that it intends to store on its servers (a step included in the ’703 patent), Limelight requires its customers to do their own tagging.”

The Court found that the conduct of Limelight did not amount to direct infringement, and stated that “in this case, performance of all the claimed steps cannot be attributed to a single person, so direct infringement never occurred. Limelight cannot be liable for inducing infringement that never came to pass.” The Court went on to note that “when Congress wishes to impose liability for inducing activity that does not itself constitute direct infringement, it knows precisely how to do so. The courts should not create liability for inducement of non-infringing conduct where Congress has elected not to extend that concept.”

The Court rejected analogies to tort law, essentially because it held that the patent interest protects against an infringer performing all steps of a method claim, and as no such infringer existed, no patent interest was undermined and there was no injury.

The Court also rejected analogies to the aiding and abetting provisions of criminal law, essentially because the Court found it “unlikely that Congress had this particular doctrine in mind when it enacted the Patent Act of 1952, given the doctrine’s inconsistency with the Act’s cornerstone principle that patentees have a right only to the set of elements claimed in their patents and nothing further.”

The Court acknowledged that the “respondents, like the Federal Circuit, criticize our interpretation of §271(b) as permitting a would-be infringer to evade liability by dividing performance of a method patent’s steps with another whom the defendant neither directs nor controls. We acknowledge this concern.” However, the Court went on to point out that “[a]ny such anomaly, however, would result from the Federal Circuit’s interpretation of §271(a) [direct infringement] in Muniauction.” Muniauction, Inc. v. Thomson Corp. and I-Deal(Fed. Cir. 2008) introduced a concept of vicarious liability in situations where a single party exercises “control or direction” over infringement by multiple actors. But the Court refused to review the merits of the Muniacution decision.

The Court remanded the case back to the Federal Circuit, and hinted that the Federal Circuit would then have the opportunity to also reconsider its direct infringement jurisprudence.