Tag Archives: Federal Circuit

Akamai Lesson: Craft Claims For Single Party Infringement

By now, you have undoubtedly received ten thousand E-mails informing you of the Federal Circuit’s recent decision in Akamai Technologies, Inc. v. Limelight Networks, Inc. in which the Court continued to wrestle with the notion of divided infringement under 35 U.S.C.§ 271.   In short, the Court refused to extend a new joint tortfeasor approach to direct infringement under 35 U.S.C. § 271(a), noting that to do so would make the other indirect infringement provisions of §§ 271(b) and (c) redundant.  Instead, the Court reiterated that for direct infringement under §271(a) to occur, all steps of a method claim must be performed by or attributable to a single entity.   

When can the combined acts of multiple parties be “attributed” to a single party?  Yet again, the Court pointed to a “mastermind” theory in which one party exercises “direction or control” over the entire process to the point that every step is attributable to the controlling party. 

The Court also outlined when vicarious liability might trigger direct infringement under §271(a): (1) principal-agent relationships; (2) contractual relationships; and (3) joint enterprises.  The most interesting was “joint enterprise,” which occurs when there is an agreement between members sharing a “community of pecuniary interest” in a “common purpose,” with each having an “equal right to voice direction of the enterprise,” thereby giving “equal right of control.”  What’s important to note is that none of these scenarios involved arms-length seller-customer relationships. 

Since the Supreme Court last decided Akamai, the safest bet for patent prosecutors has been to craft claims to capture infringing activity by a single party. The Federal Circuit’s comments that “the claim drafter is the least cost avoider of the problem of unenforceable patents due to joint infringement” only reinforce this approach. Claiming the acts of your customers is rarely beneficial and, in light of the Federal Circuit’s recent decision, will not make your infringement case any easier.

Rader’s Reign Comes to an End

The Federal Circuit Court of Appeals announced that Chief Judge Randall R. Rader will be stepping down as Chief Judge on May 30, 2014.  Judge Sharon Prost will succeed Judge Rader, who will remain active on the bench. The Federal Circuit is a unique court of appeals because its jurisdiction is not based on its geographic location, but rather on particular subject matter.  It is most well known for having exclusive jurisdiction over patent appeals from all U.S. District Courts. Nominated in 1990 by President Bush, Judge Rader has been one of the more outspoken and influential judges in the area of patent law.  Although there are rumors being circulated as to why Judge Rader has stepped down, we should remember that there are always two sides to every story.  Judge Rader could have remained within the Beltway all of these years, but, instead, he made an effort to assist practitioners across the country. We should keep this in mind in the coming weeks.

Intervening Or Disappearing Rights?

Last week, the Federal Circuit, sitting en banc, gave a shot in the arm to patentees with regard to the “intervening rights” doctrine in its Marine Polymer Technologies, Inc. decision.  The Court confirmed that “intervening rights” (which limits a patentee’s ability to recover for past damages) only apply when there are new or amended patent claims as a result of reexamination.  Prior thereto, a three judge panel of the Fed Circuit held that the doctrine had been triggered by the patentee’s arguments made during reexamination even though no amendments had been made.   In light of this decision, patentees will sleep easier, knowing that they can make arguments during reexamination without losing their claims for past damages.