Archive for the ‘Infringement’ Category

Fed. Cir. Rules Requirements for Direct Infringement by Multiple Parties

Friday, August 14th, 2015

CAFC Decides Akamai v Limelight–Holds For Infringement By Limelight–Defines Criteria For Directing And Controlling Customers’ Performance

iStock_000005967663_SmallIn Akami Technologies v. Limelight Networks, App. No. 2009-1372, -1380, -1416, -1417 (Fed. Cir., August 13, 2015), the court, sitting en banc after a remand from the S. Ct., set out the requirements for direct infringement involving acts by two or more parties under s. 271(a). The unanimous ruling held that an entity is responsible for others’ performance of method steps (1) where that entity directs or controls the acts of another, or (2) where the actors form a joint enterprise. (A copy of this decision is found at the end of this post.)

The court explained:

“… we have held that an actor is liable for infringement under s. 271(a) if it acts through an agent … or contracts with another to perform one or more steps of a claimed method. See BMC, 498 F.3d at 1380-81. We conclude, on the facts of this case, that liability….can also be found when an alleged infringer 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…. In those instances, the third party’s actions are attributed to the alleged infringer such that the alleged infringer becomes the single actor chargeable with direct infringement.”


Commil USA v. Cisco Systems – Induced Infringement In For Clarification

Monday, December 8th, 2014

Supreme Court granted cert. to resolve the question of whether or not a defendant’s belief that a patent is invalid is a defense against a charge of inducing infringement. The question appears to rest on Judge Newman’s characterization given in her dissent from the majority opinion (Proust, O’Malley). (A copy of this decision can be found at the end of this post.) However, the majority opinion appears more nuanced to me:

“Under our case law, it is clear that a good-faith belief of non-infringement is relevant evidence that ends to show that an accused infringer lacked the intent required to be held liable for induced infringement.”

I read this as simply stating that the belief can provide evidence of lack of specific intent to induce acts of infringement. The evidence may be “strong,” such as a competent opinion rendered before the offending acts, or “weak,” e.g. the opinion of a non-attorney or a just incompetent opinion. In fact, the majority makes an effort to “spank”‘ Judge Newman in footnote 1:


Supreme Court Will Review Limelight and Nautilus

Monday, January 13th, 2014

Continuing its heightened interest in IP law, on Friday the Supreme Court granted petitions for cert. to review Limelight Networks, Inc. v. Akami Technologies, Inc., U.S., No 12-786 and Nautilus, Inc. v. Biosig Instruments, Inc., U.S., 13-339. The other two grants were in a (c) and TM and so of less interest to this patent attorney.

In Limelight, the Fed. Cir. held that a defendant could be found liable for inducing infringement under 271(b) even if no one party performed the acts necessary to meet the requirement that there be direct infringement of 271(a). In the biotech/pharma space, this question becomes relevant when a testing lab measures the level of a biomarker but a specialist draws the diagnostic conclusion required by the claim.

I had not commented on the Nautilus decision in the past because the Fed. Cir. “rule” holding that a claim term violated 112(2) only if it was “insolubly ambiguous” was favorable to patentees (and, indirectly, to prosecutors). This “rule” has been challenged as essentially too lenient to said ambiguous patent claims – and the Court may consider if the presumption of validity of an issued patent lowers the bar of the statutory requirement of particular and distinct patent claiming.

I don’t think that the Fed. Cir. has erred in attempting to preserve the validity of an issued claim by reading it in view of the specification, even including “inherent parameters”, but the Supreme Court seldom takes up a Fed. Cir. decision to give them praise for preserving patentees’ shrinking bundle of rights.

Akami/McKesson Decision Re-defines Induced Infringement

Monday, September 10th, 2012

In a 6-5 decision, the Fed. Cir., sitting en banc, decided two appeals which presented questions closely related to when an actor is liable for inducing infringement under 271(b); Akami Technologies, Inc. v. Limelight Networks, Inc. and McKesson Tech’s., Inc. v. Epic Systems Corp., App. No. 2010-1291 (Fed. Cir. August 31, 2012).

The claims at issue were both multi-step method claims.  McKesson’s patent claimed a software application that it argued Epic indirectly infringed when it caused patients to initiate communications providing “My Chart” healthcare information to which the providers would respond. Epic did not perform any of the claimed steps. I won’t discuss the Akami facts, since they are less closely related to life sciences.

The court framed the question as limited to the type of infringing acts that would impart liability for induced infringement under 271 (b) and did not purport to redefine direct infringement under 271(a). The court framed the questions to be resolved as:

“[W]hether a defendant may be held liable for induced infringement if the defendant has performed some of the steps of the claimed method and has induced other parties to commit the remaining steps [as in Akami], or if the defendant has induced other parties to collectively perform all of the steps of the claimed method, but no single party has performed all of the steps itself [as in McKesson].”