Today the Supreme Court issued its opinion in Limelight Networks, Inc. v. Akamai Techs., Inc., No. 12-786, which was previously discussed here. In a unanimous decision authored by Justice Alito, the Supreme Court reinstated the prior standard for induced infringement under 35 U.S.C. § 271(b), holding that a party may not be liable for inducing infringement of a patent when no one actor has directly infringed the patent.
The Court’s decision overturns the Federal Circuit’s en banc ruling that found Limelight liable for inducing patent infringement even though the performance of all the steps in claimed Akamai’s patent was not attributable to any one person. The en banc decision was a drastic change in the Federal Circuit’s articulated standard for liability under induced infringement, which required at least one direct infringer.
Relying principally on its Aro decision and the Federal Circuit’s Muniauction decision, the Court concluded:
there has simply been no infringement of the method in which respondents have staked out [a patent] interest, because the performance of all the patent’s steps is not attributable to any one person…where there has been no direct infringement, there can be no inducement of infringement under §271(b).
The Court criticized the Federal Circuit’s decision as “depriving § 271(b) of ascertainable standards” and predicated on a “fundamental misunderstand[ing] [of] what it means to infringe a method patent.” According to the Supreme Court, a district court following the Federal Circuit’s reasoning would not be able to ascertain when an accused infringer would be liable for inducing infringement, “requir[ing] the courts to develop two parallel bodies of infringement law: one for liability for direct infringement, and one for liability for inducement.”
Further, the Court appears to be inviting the Federal Circuit to revisit its § 271(a) direct infringement analysis in Muniauction, calling it an “important issue” that “the Federal Circuit will have the opportunity to revisit the § 271(a) question if it so chooses” on remand.
The Supreme Court’s decision in Limelight reinstates the previous standard and provides more certainty to patent holders asserting induced infringement and defendants accused of inducing infringement.
This blog is made available by Foley & Lardner LLP (“Foley” or “the Firm”) for informational purposes only. It is not meant to convey the Firm’s legal position on behalf of any client, nor is it intended to convey specific legal advice. Any opinions expressed in this article do not necessarily reflect the views of Foley & Lardner LLP, its partners, or its clients. Accordingly, do not act upon this information without seeking counsel from a licensed attorney.
This blog is not intended to create, and receipt of it does not constitute, an attorney-client relationship. Communicating with Foley through this website by email, blog post, or otherwise, does not create an attorney-client relationship for any legal matter. Therefore, any communication or material you transmit to Foley through this blog, whether by email, blog post or any other manner, will not be treated as confidential or proprietary.
The information on this blog is published “AS IS” and is not guaranteed to be complete, accurate, and or up-to-date. Foley makes no representations or warranties of any kind, express or implied, as to the operation or content of the site. Foley expressly disclaims all other guarantees, warranties, conditions and representations of any kind, either express or implied, whether arising under any statute, law, commercial use or otherwise, including implied warranties of merchantability, fitness for a particular purpose, title and non-infringement. In no event shall Foley or any of its partners, officers, employees, agents or affiliates be liable, directly or indirectly, under any theory of law (contract, tort, negligence or otherwise), to you or anyone else, for any claims, losses or damages, direct, indirect special, incidental, punitive or consequential, resulting from or occasioned by the creation, use of or reliance on this site (including information and other content) or any third party websites or the information, resources or material accessed through any such websites.
In some jurisdictions, the contents of this blog may be considered Attorney Advertising. If applicable, please note that prior results do not guarantee a similar outcome. Photographs are for dramatization purposes only and may include models. Likenesses do not necessarily imply current client, partnership or employee status.