Published 11/19/2021 by CIONCA IP TEAM (SE)
In 1990, two professors from the Massachusetts Institute of Technology (“MIT”) began research techniques on stable internet services for high traffics. The two professors founded Akamai Technologies, Inc. to capitalize on their research.
Akamai Technologies, Inc. (“The Petitioner”) had a patent license on methods of delivering electronic data using a Content Delivery Network (CDN). The patent covered methods for storing and tagging content on servers to facilitate access for users.
Limelight Networks (“The Respondent”) operated a CDN that used tagged content. However, it did not perform tagging operations; instead, it gave users a guide on tagging content.
The Petitioner sued the Respondent at the District Court for patent infringement under the United States laws. The case proceeded to trial, and the jury awarded the Petitioner 41.5 million dollars’ verdict.
After a series of post-trial motions, the District Court later ruled in favor of the Respondent. It held that although the Petitioner’s patent was violated. However, much of the violation occurred when the Respondent’s customers took steps to infringe the patent. Thus, even though the Petitioner allowed it, it could not control the actions of its customers.
The Petitioner appealed to the United States Court of Appeal (the “Federal Circuit”). The Federal Circuit affirmed and held that the Respondent did not infringe on the Petitioner’s patent personally. On review en banc, the Federal Circuit relied on the provisions of 15 USC section 271 (b). Accordingly, it held that the Respondent was liable for inducing patent infringement, as it encouraged its customers’ involvement.
On further appeal to the Supreme Court, the Federal Circuit’s decision was reversed. It was held that the Respondent could not possibly be liable for inducing patent infringement.
The Supreme Court stated that there was no direct infringement under section 271(a) USC. Hence, there was no inducement to infringe by the Respondent under section 271(b). The Supreme Court reasoned that section 271(f)1 of USC separated inducement liability from direct one. The Supreme Court stated that there would be an inducement to infringe only where a person supplies the components of a patent invention, based on the section. The purpose of which must be to actively induce conducts outside the United States.
All the Petitioner’s arguments before the Supreme Court were discountenanced. The first argument was that the Respondent should be held liable for the acts of its users or jointly. The second argument was rejected because it was based on aiding and abetting, recognized only in criminal law and not patent law.
The last argument of the Petitioner was rejected because there could not be inducement without direct infringement. Therefore, the fact that a person divided the steps of patent infringement with third parties could not justify inducement liability.
The Supreme Court’s decision, in this case, stands as the law in the United States. Which means, for there to be a joint infringement, there must be cooperation between entities. Thus, since there was no cooperation between the Respondent and its users, the Respondent could not be jointly or directly liable for patent infringement or inducement.
Disclaimer: The views and opinions expressed throughout this blog are the views and opinions of the individual author(s) and/or contributor(s) and do not necessarily reflect the views and opinions of our firm, CIONCA IP Law. P.C.
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