United States adopts Divided Infringement Test

United States adopts Divided Infringement Test

Akamai Technologies, Inc, v Limelight Networks, Inc, 09-1372

After this United States Court of Appeals for the Federal Circuit (“CAFC”) decision, patent infringers will not be able to avoid a patent simply by delegating some of the steps in an infringing process to another party. The CAFC held that where more than one actor is involved in infringing the steps in a patent, one of the actors can be held liable for the entirety of the infringement if that actor “directs or controls the other’s performance.” [4] One way that a controlling actor can direct or control the others’ performance, as was found in this case, is where the controlling actor “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.” [5] This means of infringement is known as divided infringement.

Divided infringement test

Akamai patent relies on divided infringement test

In this case, Limelight Networks, Inc. (“Limelight”) was found liable in this way for infringing Akamai Technologies, Inc. (“Akamai”)’s United States Patent No. 6,108,703 (“the ‘703 Patent”). Akamai’s ‘703 patent covers a particular method of delivering content over the internet, and Limelight had its customers perform the steps of “tagging” the content in that claimed method: [7]

“as for claim 34 of the ’703 patent, Limelight performs every step save the “tagging” step, in which Limelight’s customers tag the content to be hosted and delivered by Limelight’s content delivery network.” [7]

But it was not enough that Limelight’s customers simply performed this step, it is that Limelight conditioned its customers to perform this step and established the manner and timing of that performance:

“… the jury heard evidence that Limelight requires all of its customers to sign a standard contract. The contract delineates the steps customers must perform if they use the Limelight service. These steps include tagging and serving content.” [8]

“Substantial evidence also supports finding that Limelight established the manner or timing of its customers’ performance.”[8]

“Lastly, the jury heard evidence that Limelight’s engineers continuously engage with customers’ activities.”[9]

As such, there was substantial evidence that all of the steps in the claimed method were attributable to Limelight, rendering it liable for direct infringement. [9] This decision reversed the District Court’s ruling that Limelight could not be held liable for direct infringement, as a matter of law, because it did not perform each of the steps in the claimed method. [9]


After this case, it will be more difficult to avoid patent infringement by simply delegating some of the steps in the process to another party. This includes directing your own customers commit a portion of the infringement for you, even if you have not agreed to indemnify them legally. In light of this, companies who work collaboratively on large projects should be mindful not only of their own role in a potentially patent-infringing process, but the roles of every other party involved.

This decision is especially relevant in light of the growing trend that more and more work is being done collaboratively around the world. The facts of this case are interesting to compare to the ClearCorrect case coming out of the International Trade Commission, where one company sought to avoid patent infringement by outsourcing some of the steps of a patented process to Pakistan.