786 F.3d 899 (Fed. Cir. 2015), 2009-1372, Akamai Technologies, Inc. v. Limelight Networks, Inc.
|Docket Nº:||2009-1372, 2009-1380, 2009-1416, 2009-1417|
|Citation:||786 F.3d 899, 114 U.S.P.Q.2d 1749|
|Opinion Judge:||Linn, Circuit Judge.|
|Party Name:||AKAMAI TECHNOLOGIES, INC., THE MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiffs-Appellants v. LIMELIGHT NETWORKS, INC., Defendant-Cross-Appellant|
|Attorney:||SETH P. WAXMAN, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by THOMAS SAUNDERS, THOMAS GREGORY SPRANKLING; MARK CHRISTOPHER FLEMING, ERIC FLETCHER, LAUREN B. FLETCHER, BROOK HOPKINS, Boston, MA; DAVID H. JUDSON, Law Offices of Davi...|
|Judge Panel:||Before PROST, Chief Judge, LINN, and MOORE,[*] Circuit Judges. Dissenting opinion filed by Circuit Judge MOORE. Moore, Circuit Judge, dissenting.|
|Case Date:||May 13, 2015|
|Court:||United States Courts of Appeals, Court of Appeals for the Federal Circuit|
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Appeals from the United States District Court for the District of Massachusetts in Nos. 06-CV-11585, 06-CV-11109, Judge Rya W. Zobel.
This appeal returns to us following remand from the United States Supreme Court. See Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S.Ct. 2111, 189 L.Ed.2d 52 (2014). Because our prior decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), directly apply to the facts of this case and because the statutory framework of 35 U.S.C. § 271 does not admit to the sweeping notions of common-law tort liability argued in this case, we again conclude that because Limelight Networks, Inc. (" Limelight" ) did not perform all of the steps of the asserted method claims of U.S. Patent No. 6,108,703 (the " '703 patent" ) and because the record contains no basis on which to impose liability on Limelight for the actions of its customers who carried out the other steps, Limelight has not directly infringed the '703 patent under § 271(a). Accordingly, we affirm the district court's finding of noninfringement and do not reach Limelight's cross-appeal regarding damages. We also confirm our previously reinstated affirmance of the district court's judgment of noninfringement of U.S. Patents No. 6,553,413 (the " '413 patent" ) and No. 7,103,645 (the " '645 patent" ). See Akamai, 629 F.3d 1311 (Fed. Cir. 2010), which was vacated, 419 F.App'x 989 (Fed. Cir. 2011)
( en banc ), and then partially reinstated. Order No. 2009-1372 (Fed. Cir. Sept. 27, 2012) ( en banc ).
A detailed description of the history of proceedings, the technology and the claims at issue in this case is set forth in the prior reported opinions of this court and the Supreme Court and will not be repeated except to the extent germane hereto. See Limelight, 134 S.Ct. 2111, 189 L.Ed.2d 52; Akamai, 692 F.3d 1301 (Fed. Cir. 2012) ( en banc ); Akamai, 629 F.3d 1311.
II. Divided Infringement Under § 271(a)
In the court's view, and for the reasons set forth in more detail, infra, direct infringement liability of a method claim under 35 U.S.C. § 271(a) exists when all of the steps of the claim are performed by or attributed to a single entity--as would be the case, for example, in a principal-agent relationship, in a contractual arrangement, or in a joint enterprise.1 Because this case involves neither agency nor contract nor joint enterprise, we find that Limelight is not liable for direct infringement.
Direct infringement under § 271(a) requires a party to perform or use each and every step or element of a claimed method. Warner-Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997). For method patent claims, direct infringement only occurs when a single party or a joint enterprise performs all of the steps of the process. See Joy Techs., Inc. v. Flakt, Inc., 6 F.3d 770, 775 (Fed. Cir. 1993) (" A method claim is directly infringed only by one practicing the patented method." (emphasis omitted)); Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565, 1567-68 (Fed. Cir. 1983) (" Because the [method] claims include the application of a diazo coating or other light sensitive layer and because Advance's customers, not Advance, applied the diazo coating, Advance cannot be liable for direct infringement with respect to those plates." ). This holding derives from the statute itself, which states " whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent." § 271(a). Encouraging or instructing others to perform an act is not the same as performing the act oneself and does not result in direct infringement. BMC, 498 F.3d at 1378-79. This is evidenced by the fact that § 271 has separate subsections addressing induced and contributory infringement. When a party participates in or encourages infringement but does not directly infringe a...
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