Trans-Border Active Patent Inducement under Akamai

By Dennis Crouch

This post discusses Professor Holbrook’s new essay on the extraterritorial consequences of the recent Akamai decision.

In Akamai v. Limelight, an en banc Federal Circuit (CAFC) expanded the scope of liability for actively inducing patent infringement (inducement). Under the old rule, an active inducement charge required proof that an induced third party actually practiced the patented method. Akamai loosened that constraint a bit. Under the new rule, actively inducing infringement of a patented method no longer requires underlying infringement by the third party. The court replaced that element with a requirement of proof that each step of the patented method be performed. Thus, the difference between the old and the new is that active inducement no longer follows the single infringing actor rule that is *still* applied in the context of direct infringement. Under the new rule, a defendant could be held liable for active inducement even when it took three different actors to collectively perform the patented-steps. The statutory basis for active inducement is 35 U.S.C. §271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”). At least as interpreted, the statute does not provide any help in understanding which of these two interpretations (old & new) are correct.

Akamai raises a host of further more detailed question about application of the newly revised doctrine.     

In his most recent essay, Professor Timothy Holbrook (Emory) focuses on one of his specialties – international application of the patent laws – and considers how the new law of inducement applies in the international and trans-border patent infringement context.

The crux of Holbrook’s essay begins with the statutory definition of direct patent infringement that uses the phrase “within the United States” as a territorial limitation on patent infringement actions. 35 U.S.C. § 271(a). The old rule of active inducement was linked to this definition and thus included an implicit territorial limitation as well. In Akamai, the court decoupled active inducement from the direct infringement definition of 271(a) and challenges whether (and how) a territorial limitation will be applied moving forward.

One suggestion is that the Federal Circuit should rely upon its control-and-beneficial use doctrine developed in NTP v. Research-in-Motion, 418 F.3d 1282 (Fed. Cir. 2005), to determine whether the territorial limits of the patent laws bar an inducement action. However, NTP is a deeply unsatisfying opinion and has little basis in the law, and such an extension of that opinion would have even less basis in law. Holbrook suggests that when portions of the induced activity occurs in another country, the court should focus on whether the patentee bringing the infringement action has a parallel patent in that other country. If so, then the inducement action can move forward. On the other hand, the absence of such parallel patents suggest that the trans-border inducement action unduly extends US law. Holbrook writes:

The baseline principle would be as follows: if there would not be infringement of the patent in the foreign country, then there would be no infringement of the United States. As I have advocated elsewhere, this approach takes into account potential conflicts with foreign law, which is one of the justifications for the presumption against extraterritoriality.

I should note that Holbrook has offered his solution more broadly as a replacement for the NTP test.

For patentees, the interesting result of Professor Holbrook’s approach is that provides an additional incentive for patentees obtain foreign patent protection because that protection bolsters their US patent rights. In this sense, it gives an edge to non-US innovators who are already much more likely to obtain foreign rights than are US based entities. The approach also offers a straightforward avenue for someone to receive the benefit of practicing the invention without paying royalties and without infringement liability. The approach would be to identify countries where the patent is not protected and induce performance of some steps of the method there. However, in most cases that approach is likely too far-fetched for most situations.

Read the essay: Timothy Holbrook, The Potential Extraterritorial Consequences of Akamai, forthcoming in the Emory International Law Review (2012) online at http://ssrn.com/abstract=2154277.

50 thoughts on “Trans-Border Active Patent Inducement under Akamai

  1. The follow seems self evident:

    When a patented process produces a product, the product is covered under 102(g) against using or selling in the US.

    The person who performs the last step in the process in the US makes the product.

    Making is direct infringement under 271(a).

    Ergo, the person who performs the last step in the process to produce a product is a direct infringer under 271(a).

  2. MM, I agree that simple importation does not violate 271(a).  

    Now sell the item was made abroad by the process.  Infringement under 271(a)?

    Now use the item was made abroad by the process.  Infringement under 271(a)?

    If not, why not?  Anyone who make, uses, or sells a patent invention in the US infringes.  Why is that product of the patented process not the "invention" within the meaning of 271(a).  Both are clearly direct infringements under 102(g). 

    It is the Federal Circuit who is out there and being ridiculous.  Let is call it for what it is:  Rader was protecting his big corporate allies against business method patents when he penned BMC.  He was doing their bidding and he was proud to do it.

  3. The holding:  that the government is liable if the contractor is DIRECTLY LIABLE.

    The novel steps were conducted outside the US.  They could have been conducted by others in the US.  102(g) applies to both in the same way.  The partial practice resulted in a product that was then used by the government contractor to product the finished product.  This was DIRECT INFRINGEMENT.

    There is nothing in the case that conditioned the holding on any limitation that some of the steps were conducted by others.  That one render Zoltek easily avoided by simply contracting out the work to others, or by buying the partially finished products from a vendor.

    From Zoltek

    In Quanta Computer, Inc. v. LG Elecs., Inc., the Supreme Court held that in the patent exhaustion context, "methods . . . may be `embodied' in a product." 553 U.S. 617, 628, 128 S.Ct. 2109, 170 L.Ed.2d 996 (2008). The holding was necessary to avoid "an end-run around exhaustion" where "[p]atentees seeking to avoid patent exhaustion could simply draft their patent claims to describe a method rather than an apparatus." Id. at 629-30, 128 S.Ct. 2109. 

    102(g) provides that the importer or the user or the seller of a product produced by a patented process is an infringer.  

    The court went on to determine that all that was required is that the product embody the invention.  It made no fricken difference if the one step or more was practiced by others or outside the US.  The person who finishes the product, or who sells it, is a direct infringer.

    DIRECT INFRINGER.

    Think about that.  

    So why isn't the person who practices the last step of a patented process on a product embodying the other steps an infringer under 102(a)?  That makes no sense?

  4. (g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer….

    Do all the steps have to be practiced in the US?

    No.

    Do all the steps have to be practice by one party?

    Depends.

    Can one infringe 271(g) without infringing 271(a)?

    Sure. I could buy an unpatented doohickey in Europe made by a process covered by a US patent. If I try to import the doohickey, I’m liable for infringement under 271(g) but not 271(a).

    You’re wasting my time, Ned. I’m done with this thread. If you bring up this Univis baloney on another thread though I’ll be all over you again so be more prepared or be more careful about your absurdly broad interpretation of the holding of that case.

  5. MM, the latter actually is a holding of the en banc court in Zoltek.

    No, it certainly isn’t. Quote the holding of the case, in full. Compare the holding to what you wrote. You will see that what you wrote (“Where there is a product of the process, the person performing the last step to finish the product is a direct infringer even if the other steps of the process are not performed in the US or by others”) is not the holding of the court in Zoltek.

    Better yet, review the hypothetical that I wrote upthread and consider again how ridiculous your proposition is when applied to a very simple set of facts.

  6. Malcolm, yes.

    You seemed to place great emphasis on a fact pattern that was not consistent with the facts of Univis Lens.  

    Now, consider 271(g).

    What does this mean to you?  Do all the steps have to be practiced in the US?

    (g) Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer….

    What does this mean to you?  

    Do all the steps have to be practiced in the US? Do all the steps have to be practice by one party?Can one infringe 271(g) without infringing 271(a)?

     

     

  7. Zoltek is also a prime example of the very, very, very confused thinking by the Federal Circuit. They held that there was direct infringement, but seeming no government liability under any of the following:

    271(a)
    271(b)
    271(c).

    Huh?

  8. MM, the latter actually is a holding of the en banc court in Zoltek. If you think it radical, I suggest you read the case.

    Zoltek facts:

    Novel steps performed in Japan, imported by a government contractor into US, where finishing step is performed. The finished product is applied to a fighter and sold to the government.

    The patentee had sued in the court of claims. The Feds had dismissed the complaint because there was no direct infringement by the government contractor. That opinion was vacated by a later en banc Federal Circuit ruling on a different issue: a motion to transfer by the government contract now that the US had been dismissed from the case.

    The court held that the finished components embodied the invention, that there was direct infringement regardless of 271(a), and that the government was liable for the direct infringement of the contractor.

    Now, what did the contractor do?

    Import the partially completed components from Japan, finish them, and used them in making the fighter.

    What makes Zoltek amazing is that even though there was direct infringement, the court also seem to suggest there was no liability under 271(a)?

    What?

    If that is the case, even thought there is direct infringement there are no damages.

  9. They make broad statements on small canvases as a matter of routine.

    Reminds me of someone else in this thread …

  10. Malcolm, to the contrary. The Court was of the opinion in Univis that the step practiced by the purchaser was entirely conventional.

    That doesn’t contradict any of what I wrote above. Do you know what “contrary” means?

  11. IANAE, but it is important, as the Federal Circuit got it wrong, once again.  They are prone to fundamental error.  They make broad statements on small canvases as a matter of routine. They may be the worst court in all history.

  12. IANAE, you are tripping over yourself.

    Practicing the novel steps of a process to produce a product that is finished by an independent third party is not an infringement under BMC.  But it is under Univis Lens.  There cannot be contributory infringement without direct infringement, and the Supreme Court has so held.

    Univis Lens and BMC cannot co-exist.  One is bad law.  Clearly, BMC is bad law.

    Regarding 2. "Exhaustion only applies to the sale of an infringing article, not to the sale of non-infringing components."

    What you said here seems to suggest that only directly infringing articles are subject to exhaustion.  To the extent you say this, you are wrong.

    Regarding the rest of your statement, you are reading into Univis Lens statements not made by the Supreme Court.  The critical fact was that the sale of lens blanks for finishing by anybody was contributory infringement.  

    From Univis:

    "Notwithstanding the assumption which we have made as to the scope of the patent, each blank, as appellees insist, embodies essential features of the patented device, and is without utility until it is ground and polished as the finished lens of the patent. We may assume also, as appellees contend, that sale of the blanks by an unlicensed manufacturer to an unlicensed finisher for their completion would constitute contributory infringement by the seller."

  13. There is a subtle difference. “Direct infringment” also requires that the steps be performed “within the United States” and “without authority” of the patent owner.

  14. Malcolm, to the contrary.  The Court was of the opinion in Univis that the step practiced by the purchaser was entirely conventional.  That did not change the result.

    The novelty was in the steps forming the lens blanks, comprising fusing lens pieces of different refractive lens into one blank, wherein the blank could be finished according to the prescription of the end user.  The last step was conventional.

    I urge you to carefully re-read Univis Lens.

    The Univis Lens hypothetical claim:

    Steps A, B and C performed by blank mfg. to produce lens blanks.

    Step D performed by opticians to finish the lenses according to a patient's prescription.  This was unchanged in nature from the prior art.

  15. exhaustion applies to method claims

    That’s a pretty mundane point to be citing Supreme Court authority for.

  16. The court agreed there was exhaustion. This meant that there was contributory infringement

    See, there’s your problem right there. Two problems, actually.

    1. They agreed there was exhaustion. This means that there was infringement. In other words, they started with an idea of where they wanted to draw a line based on exhaustion, and worked backward from there to find an “infringer” who wasn’t even an infringer. Normal infringement analysis is to find an infringer first, and then apply exhaustion from that point forward.

    2. Exhaustion only applies to the sale of an infringing article, not to the sale of non-infringing components. Practicing most of a claim has never constituted infringement in any patent case where the patentee and the accused infringer were mutually adverse in the same courtroom. They found infringement/exhaustion here because the patentee had orchestrated the entire chain of commerce. Which meant that it wasn’t really infringement anyway, just a point where the court wanted to say “you can set the price, but only up to here”.

    As for “essential features”, I don’t suppose the “all elements” rule rings a bell?

  17. Malcolm, consider the rock, and the sharp tool made from the rock.  

    I claim, a process of making a knife from a rock comprising;

    chipping one face of the rock to form a sharp edge.

    Now, you say that a person who chips old rocks to form sharp edges is not an infringer?

    Now consider another claim where I add conventional steps:

    I claim: 

    selecting a rock having dimensions and weight to be easily held by a human; and

    chipping one face of the selected rock to form a sharp edge.

    Adding conventional steps.  Now where have we seen something like that before?

    Regarding Univis, it was reaffirmed in Quanta, a case that specifically held that exhaustion applies to method claims.

  18. Ned The Supreme Court here expressly acknowledges that a method patent may be infringed by different parties practicing different steps, so long as their activity is related.

    If it the Supreme Court was “expressly” acknowledging some aspect of infringement, you’d see the word “infringement” in the quote. The term is missing from the quote. So there is no such express acknowledgement.

    As for this:

    a method patent may be infringed by different parties practicing different steps, so long as their activity is related

    that’s a rather hedged and banal conclusion, and more importantly a far cry from your earlier, much more radical (and false) assertion (i.e., “Where there is a product of the process, the person performing the last step to finish the product is a direct infringer even if the other steps of the process are not performed in the US or by others.”). Your back must be pretty sore from moving that goalpost.

  19. IANAE, the claims of the five (IIRC) relevant patents in Univis are described in the case.  They are method claims.  All the novel steps were practiced by producers of the lens blanks.  The finisher practiced only the prior art step of finishing.

    The court agreed there was exhaustion.  This meant that there was contributory infringement by the practicers of the method steps when they sold the partially finished lens blanks to finishers, who in fact finished the lenses.  All process steps were performed.

    Regardless of your price fixing theory, Univis Lens was confirmed in Quanta, another case involving method claims and whether the purchaser of a product embodying the essential features of a patent, even a method patent, exhausted the patent upon sale.   The whole point of Quanta was whether the Federal Circuit was right in stating that exhaustion does not apply to method claims.  

    There can be no exhaustion without infringement.  Period.

    No one overruled Univis Lens or Quanta.  Both are good law.  Both are inconsistent with BMC — and with Akamai.

    Regarding BMC, all one really has to do is note that it was written by a judge who is renown for writing large on a small canvas.  Whether there was infringement in BMC or not did not depend upon whether all the steps were conducted by one party or not.  In coming up with his novel theory, this judge once again got it wrong.  As judge Newman wrote later, BMC was the aberation.

    A short blurb from Quanta, a case that overruled the BMC-enacting Federal Circuit:

    "Nothing in this Court's approach to patent exhaustion supports LGE's argument that method patents cannot be exhausted. It is true that a patented method may not be sold in the same way as an article or device, but methods nonetheless may be "embodied" in a product, the sale of which exhausts patent rights. Our precedents do not differentiate transactions involving embodiments of patented methods or processes from those involving patented apparatuses or materials. To the contrary, this Court has repeatedly held that method patents were exhausted by the sale of an item that embodied the method. …[A]s previously described,Univis held that the sale of optical lens blanks that partially practiced a patent exhausted the method patents that were not completely practiced until the blanks were ground into lenses. 316 U.S., at 248-251, 62 S.Ct. 1088."

    The Supreme Court here expressly acknowledges that a method patent may be infringed by different parties practicing different steps, so long as their activity is related.

  20. Ned: What was critical was that the practice of the initial steps to create that the lens blanks embodied in the lens blanks essential features of the invention.

    And what does that phrase “emobidies essential features” refer to? It refers to the fact that the only use and the whole point of the sale of the lens blanks was for the purchaser to practice the patented method on the lenses and/or to sell patented lenses. So it wasn’t fair for the seller/patentee to profit from the sale of its blanks AND require downstream purchasers of finished lenses to adhere to the patentee’s price fixing requirements.

  21. Ned: Univis Lens [involved] method claims and it involved products produced by the method steps. Not all the steps were performed by the same party. And yet there was exhaustion.

    Yes, because a product was sold that was held to “embody the essential features of the patented method”. It was deemed to be unfair to sell that product and require the purchaser of that product to separately license the method (or to adhere to Univis’ price fixing scheme). The key fact again (quoting from wikipedia): “the only use to which the blanks would be put and the only object of their sale was to enable the manufacture of the patented lenses.”

    This case represents a very particular set of facts, Ned. You are trying to generalize the result to make some completely ridiculous conclusion about what constitutes “direct infringement” in cases where these facts do not exist.

  22. Malcolm, in your hypothetical, steps A to C produce an old hat. Step D is the sole novel step. And yet you deny that the practitioner of step D is an infringer?

    You have got to be kidding!

    Okay, let’s put your fact into my hypothetical: D is the only new step in the claim. In the real world we call that sort of claim a “sh tty claim” because it recites steps that are required for infringement but that were not required for the claim to have been granted in the first place.

    But none of that changes the conclusion I stated below my hypothetica.. I’m not kidding and you really need to come to remember the fundamentals and stop inhaling the fumes of Univis which (again) is about the application of the exhaustion doctrine to a very specific set of facts.

  23. Univis Lens was about exhaustion which requires infringement.

    It was about exhaustion after the sale by the contributory infringer, who had not himself completed the patented article, and therefore was not a direct infringer. That’s not even a self-consistent application of the principle.

    The only reason they found exhaustion in Univis Lens was that they were determined to find that the second sale constituted price fixing, so they needed some kind of wacky theory that implicated the second-last seller for infringement. He presumably wasn’t even in court to contest the question of whether he was an infringer.

    Now, remind me again what the claim was in Univis Lens.

    Because all these cases essentially say that there is direct infringement when a party performs the final step of the patented process in the United States on an article that embodies the prior steps,

    If the claim is “providing a hat, and performing step D”, then performing step D on an existing hat is a direct infringement. If not, it’s not. Because the claim recites four steps, and you haven’t performed them all. Unless you specced out a hat produced by the method A, B, C.

    Infringing a method claim means doing what the claim says. You don’t need Supreme Court authority for that.

  24. Malcolm, Univis Lens was about exhaustion which requires infringement. It evolve method claims and it involved products produced by the method steps. Not all the steps were performed by the same party. And yet there was exhaustion.

    Quanta reaffirmed Univis lens. Quanta restated the Univis Lens principle. Quanta was also was about method claims. Quanta was after BMC. Quanta implicitly overruled BMC to the extent that BMC was ever correct, which it was not.

    Zoltek was also after BMC, was also en banc, relied on Quanta and Univis lens, and found there to be infringement when the US practitioner practice only the last step, the other steps practice in Japan on a product that was imported. The principle of the case was that the product produced by a patented process was an infringement. He did make any difference who performed the steps in time and place. Only that the final step be done in the United States.

    Because all these cases essentially say that there is direct infringement when a party performs the final step of the patented process in the United States on an article that embodies the prior steps, BMC resources must be wrong. Further, the majority opinion is only partially correct in Akamai. Newman must be correct.

  25. Malcolm, in your hypothetical, steps A to C produce an old hat. Step D is the sole novel step. And yet you deny that the practitioner of step D is an infringer?

    You have got to be kidding!

  26. IANAE, it doesn't make any difference whether Univis Lens was an infringement case or not. There can be no exhaustion without infringement or the right to exclude being violated. The principle of exhaustion is that the patentee can only collect one time for an infringement, and thereafter the patented product passes beyond his control.

    Furthermore, while 271 was the first codification of the law of infringement, it was not intended to change the law except perhaps to overrule Mercoid.

    I don't have a copy of the claims for the court in the case. However court itself describe the relevant claims as being method claims. They further you the opinion that what the optician's did in finishing the lenses was old and conventional, albeit necessary to give the lenses utility. What was critical was that the practice of the initial steps to create that the lens blanks embodied in the lens blanks essential features of the invention.
     
     
     

  27. DT Why shouldn’t Akamai be viewed as still requiring an underlying direct infringement for inducement, but not requiring a single entity to be liable for direct infringement?

    If you define “direct infringement” as “carrying out all the steps in the a claim” without requiring a single entity to carry out the steps (or direct/control who carries out the steps), then the view you stated is identical to the view stated by Dennis.

  28. Ned They held there that a sale of a component embodying the essential elements of the patent exhausted the patent? How so unless that sale infringed?

    How can you have exhaustion without infringement? The answers are right there in your statement of the holding: (1) the sold component embodied the “essential elements” of the patent and it would have been unfair to the buyer to hold the buyer for infringement of the process claim after the sale; (2) unless I’m missing something, an exclusive owner of a patent can’t infringe that patent.

    Akamai doesn’t discus Univis Lens because Univis Lens is an exhaustion case and wasn’t deemed to be relevant or persuasive by any of the parties. This sort of thing happens all the time. Let it go.

  29. “Under the new rule, actively inducing infringement of a patented method no longer requires underlying infringement by the third party. The court replaced that element with a requirement of proof that each step of the patented method be performed.”

    Why shouldn’t Akamai be viewed as still requiring an underlying direct infringement for inducement, but not requiring a single entity to be liable for direct infringement? Under this view, there are no extraterritoriality issues created by the Akamai holding.

  30. Where there is a product of the process, the person performing the last step to finish the product is a direct infringer even if the other steps of the process are not performed in the US or by others.

    As a general proposition, this is false (more importantly, it’s ridiculous on its face). Whatever happened in Univis Lens is limited to its facts, which is why you can’t find this general proposition stated anywhere in the case law.

    Let me put it another way for you (again). Consider the claim:

    1. A new method of making an old hat, comprising

    step A,
    step B,
    step C, and
    step D.

    Absent other facts, if I merely buy a hat or (better yet) FIND a hat made according to steps A-C and modify it by carrying out step D, I am not a “direct infringer” of claim 1. No way. No how. For any court to hold otherwise would represent an insane disgrace to everything we understand about patents. For you to declare otherwise (repeatedly) is simply careless and annoying.

    And, no, I don’t have to “explain” the result in Univis Lens to you.

  31. In Univis Lens, the optician performed an old and conventional step. There was direct infringement. The sellers of the lens blanks contributorily infringed.

    Univis Lens wasn’t a patent infringement case, it was a price-fixing case that started from the theory that selling the blanks must be contributory infringement (because it was so clearly wrong), and then trying to find a direct infringer. Which we don’t even need to do anymore, because Akamai is much more sensible about contributory/induced infringement.

    I don’t suppose you have a copy of the claim at issue in Univis Lens?

  32. IANAE, In Univis Lens, the optician performed an old and conventional step. There was direct infringement. The sellers of the lens blanks contributorily infringed.

    Regarding people practicing the prior art steps, they create an old product. In order for there to be contributory infringement, the thing sold must be a material part…. of the invention, etc. If seller is practicing only the prior art, he is by definition not selling any material part of the invention.

    Newman is right.

  33. I would oppose banning the pollutant and let the free market take care of the problem. Relying on the government to deal with pollution (e.g., hiring inspectors or passing stricter laws) simply creates a far worse problem. The next thing you know Big Brother will be throwing you in jail for using the wrong dishwashing detergent.

    /Libertardian off

  34. the person performing the last step to finish the product is a direct infringer

    If you have a new method of making chocolates, and the last step of the claim is eating the chocolate, then what?

    On the other end of the spectrum, take a Prometheus-style claim where all but the final “step” is a completely mundane prior art activity, e.g. performing known blood tests or mining/refining a known material. Would you consider those practitioners of the prior art to be contributory infringers?

    You can’t directly infringe without performing, or causing to be performed, all the steps. To the extent that Newman says otherwise, she isn’t right.

  35. OK, Dennis.

    But I find it downright bizarre that Akamai discussed neither Zoltek, nor for that matter Univis Lens or Quanta.  The latter case, a Supreme Court case, came down after BMC.  It related to method patents, that was the big issue.  They held there that a sale of a component embodying the essential elements of the patent exhausted the patent?  How so unless that sale infringed?  How can there be contributory infringement unless the buyer of the partially finished component and who practices the last step infringes?  How?

    That case all but directly overruled BMC.  BMC is not good law on any score.  

    Newman is right.
     

  36. Univis Lens, Zoltek

    Where there is a product of the process, the person performing the last step to finish the product is a direct infringer even if the other steps of the process are not performed in the US or by others.

    Where there is a direct infringer, the party performing the earlier steps and selling partially completed product is a contributory infringer.

    Newman is right.

  37. If 2% of a type of pollutant causes birth defects, would you oppose banning it because 2 is such a small number?

  38. Well, we shouldn’t blow it out of proportion. After all, far fewer than 2% of all patents are litigated anyway. Right, anon?

  39. Dennis, anyone else,

    Thoughts on the Boldrin/Levine article calling for abolishing all patents? I see it hasn’t been reviewed on this site yet.

  40. Doesn’t your statement presuppose that “US rights” extend to barring foreign activities?

    I don’t think IANAE’s statement does that, necessarily, but he’s addressing a rather vague statement in the original post (“an additional incentive for patentees obtain foreign patent protection because that protection bolsters their US patent rights”).

  41. Doesn’t your statement presuppose that “US rights” extend to barring foreign activities?

    Only to the extent already provided by law, which is that the domestic activity of importation makes the foreign activity of practicing the claim a domestic infringement. Akamai would appear to hint at the possibility that some steps could be performed by importation and others within the US, as long as the requisite inducement/control is present.

    If the article never sees US soil at all, of course the US patent is powerless against it.

  42. IANAE Why should US inducement have anything to do with the existence or scope of a corresponding foreign patent? Either the US patent is infringed or not. We can’t go asking people to obtain foreign patents as a prerequisite for enforcing their US rights.

    I agree.

    Perform steps A and B abroad, import the result into the US, and perform steps C and D. Anybody have a problem with calling that inducement under Akamai?

    Provided that there is an actual inducer, I don’t have a problem with calling that inducement under Akamai. That’s my general impression, anyway. I keep thinking there is some thorny issue lurking regarding the importation of information (e.g., the importation of a conventional, tangible composition encoding new information) but I haven’t yet concentrated on finding it …

  43. We can’t go asking people to obtain foreign patents as a prerequisite for enforcing their US rights.

    Doesn’t your statement presuppose that “US rights” extend to barring foreign activities? I think that’s called begging the question.

  44. The crux of Holbrook’s essay begins with the statutory definition of direct patent infringement that uses the phrase “within the United States”

    … or imports into the United States…

    Perform steps A and B abroad, import the result into the US, and perform steps C and D. Anybody have a problem with calling that inducement under Akamai? Remember, the Akamai test isn’t whether there is a single infringer, but whether the claim is infringed.

    Holbrook suggests that when portions of the induced activity occurs in another country, the court should focus on whether the patentee bringing the infringement action has a parallel patent in that other country.

    Why should US inducement have anything to do with the existence or scope of a corresponding foreign patent? Either the US patent is infringed or not. We can’t go asking people to obtain foreign patents as a prerequisite for enforcing their US rights.

  45. Minor quibbles:

    Under the new rule, a defendant could be held liable for active inducement even when it too three different actors to perform the patented-steps.

    Seems to be a spell-check error.

    The statutory basis for active inducement is 35 U.S.C. §271(b) (“Whoever actively induces infringement of a patent shall be liable as an infringer.”). At least as interpreted, the statute does not any help in knowing which of these applications is correct.

    It’s not clear what “applications” are being referred to in the last sentence. Also, regardless of the “correctness” of any interpretation, I might rephrase the last sentence differently: “The statutory language does not limit the number of actors who may be separately induced to carry out discrete steps in a claim.”

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