CAFC Decides Akamai v Limelight–Holds For Infringement By Limelight–Defines Criteria For Directing And Controlling Customers’ Performance
In 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.”
At least holding 1 (“acts through an agent or contracts through another”) provides an answer to the question of whether or not a physician who orders a diagnostic test from a test lab is a direct infringer under 271(a). Of course, no one wants to sue the physician, and 35 USC s. 286 (c) exempts physicians and their related health care entities from liability for infringement of a patented “medical activity.” However this section was enacted to shield physicians from liability for conducting a surgical procedure, and it contains a number of exceptions from “medical activities.” The important exclusion is that for “the use of a patented machine, manufacture or composition of matter in violation such patent.” So while a diagnostic method claim may be exempt, a claim to a kit or to a patented component of the kit, such as a biomarker reference, probably is not. Also, if the physician in acting as an agent of his employer, the health care entity, the health care entity may well be liable for direct infringement, particularly if the physician is required by contract to use another branch of his/her employer, i.e., the clinical testing lab of the “entity” to carry out the diagnostic test having a patented component. So “kit claims” and claims to cDNA, cffDNA, iRNA and other biomarkers may become more important in the future, as the future for diagnostic method claims contracts.