Supreme Court Takes-On Question of Joint Infringement

By Dennis Crouch

[Transcript of Oral Arguments]

The Supreme Court heard oral arguments today in Limelight Networks Inc. v. Akamai Technologies, Inc. Limelight is best seen as part of a series of cases considering what it means to be an infringer. In particular, the court has struggled to determine what to do when one party performs a portion of a patented invention and then another party performs the remaining portion. In this setup, the parties are able to collectively benefit from the invention without being labelled infringers under the Federal Circuit’s strict single-entity-infringer rule. See BMC v. Paymentech (Fed. Cir. 2007). The BMC line of cases creates an avenue for avoiding infringement by properly dividing the corporate structure. That pathway is further solidified by our current age of distributed computing that allows for servers and systems to closely interoperate even though controlled by different parties. In this case, the invention is focused on a mechanism for quickly delivering video streams to lots of people over the internet by distributing servers. The patent spells out the entire method and system for accomplishing this result, but the defendant here each only practice a portion of the whole invention but expressly encourages its customers to perform the rest. In an admittedly biased way, the patentee’s attorney Seth Waxman explained the setup as follows:

Mr. Waxman: This case is not complicated. This case involves a four­ or five­step method in which Limelight performs all but one or two of the steps and tells its customers, if you want to use our service, you have to perform the other step. Here’s exactly how you do it. We have somebody 24 hours a day, seven days a week assigned to you to help make sure you do it the right way.

In Limelight, the Federal Circuit (sitting en banc) offered one outlet to limit avenues-of-infringement. Here, the appellate court held that an entity can be liable for inducing infringement if that party induces performance of the entire invention, even if no single party performed all of the elements. That holding is a shift in thinking – prior case law required evidence of underlying single-actor direct infringement as a pre-requisite to an inducement finding. The statute for inducement indicates simply that “whoever actively induces infringement of a patent shall be liable as an infringer.” 35 U.S.C. § 271(b). An interesting element of this case is that the Limelight originally indicated that it would reconsider the BMC doctrine regarding direct infringement. However, the en banc panel decided to limit its analysis only to the inducement theory. If Limelight is successful on appeal, the Federal Circuit may then have an opportunity to reconsider the single-actor rule for direct infringement under Section 271(a). More particularly, the Federal Circuit has applied a fairly strict agency doctrine rule, but other areas of law have allowed for a more liberal agency doctrine that would potentially capture the type of joint infringement alleged in this case.

The question presented is:

Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a).

Aaron Panner argued on behalf of the petitioner Limelight (the accused infringer) and shared time with Assistant Solicitor Ginger Anders who filed a brief in support of the petitioner. Seth Waxman argued on behalf of the respondent-patentee Akamai. In the case, the US government took the middle-ground position that the patentee has the best policy argument but that the statute clearly supports reversal.

Focusing first on the policy issues, the court asked whether Limelight is asking for a rule that allows patentees to skirt infringement simply by altering its corporate structure:

CHIEF JUSTICE ROBERTS: Your position makes it pretty easy to ­­ to get around patent protection, doesn’t it? All you’ve got to do is find one step in the process and essentially outsource it or make it attractive for someone else to perform that particular step and you’ve essentially invalidated the patent.

MR. PANNER: I don’t think so, Your Honor. In the two following senses.

First of all, empirically speaking, there have not been very many cases in which this has proven to be a problem. It has been a long understood principle of patent claim drafting that method claims should be drafted from the point of view of a potential infringer so that all of the steps can be carried out by that potential infringer. And prospectively, certainly ­­ and given that this rule has been clearly articulated by the Federal Circuit now for many years, or at least several years, prospectively, the patent applicant has every incentive to draft claims from the point of view of a single potential infringer.

This ­­ the claim that’s at issue here, there’s no dispute. It could have been written in such a way that the steps would have been carried out by a single infringer and, indeed, that may have been the intent. . . .

JUSTICE SCALIA: I’m just arguing about whether the safe haven you have given us for patentees really exists. It doesn’t seem to me you can avoid the problem by simply requiring all the steps to be conducted by one person.

MR. PANNER: Well, Your Honor, in ­­ in my experience in ­­ in terms of dealing with patents that are written to technologies that do involve interaction, for example, between cellular phones and networks and content providers who are sending content to a phone, for example, it is very common to draft claims from the point of view of someone who’s participating in that process so that all of the steps will be carried out in that ­­ by that person. . . .

JUSTICE KAGAN: [N]otwithstanding what you said about 10 of 11 judges, it was clear that the judges thought that there was a real problem here in terms of an end run, and that they looked at this and said, well we could do it under 271(a) or we could do it under 271(b), and 271(b) seems a lot more natural and better for various reasons. But your sense in reading the opinion that all those judges who did it under 271(b) are just going to go back and do the exact same thing under 271(a).

Panner’s argument here does not seem like one that the judges would truly support – that the patentee wins or loses here based upon whether it correctly followed the proper claim-drafting trick.

Responding to the same issues, the US Government lawyer (Anders) recognized the “end run” problem as legitimate.

MS. ANDERS: I think the Federal Circuit was understandably concerned about allowing inducers to perform some stops of a process themselves to escape liability, but this Court has twice held in both Microsoft v. AT&T and before that Deep South v. Laitram that judicial concerns about gaps in 271’s coverage should not drive the Court’s interpretation of that provision. That is because any time that you close a gap in 271, expanding patent rights, you are invariably implicating competing concerns and it’s for Congress to resolve those concerns.

When his turn to speak, Waxman hit home the policy concerns:

MR. WAXMAN: Please make no mistake about what Limelight is asking you to do. Under Limelight’s theory, two or more people can divide up and perform the steps of any method claim, however drafted, without liability. . . . Let’s assume that there is disclosure and patenting of a cure for cancer or a novel treatment for cancer that involves, as they often do, the administration of different drugs sequentially. And two parties get together and say, I’ll administer Drug 1, you administer Drug 2, and we can take advantage of this marvelous patented process without paying anything ­­ giving anything whatsoever to the company that spent a billion dollars and 25 years developing.

Several of the Justices rightly recognized the potential notice problems of joint liability in a strict liability scenario. However, those fears are greatly reduced in the inducement context because liability requires knowledge that the acts being induced would constitute infringement. Waxman attempted to also allay those fears by referencing a common law knowledge requirement implied into joint-concert liability.

When the Federal Circuit decided this case, it appeared to be a new rule regarding inducement liability. In his appealing way, Waxman argued that it is not really new but rather it is a return to the common law notions that were disrupted by the Federal Circuit’s unnatural limitations on 271(a) joint liability that began in 2008.

JUSTICE SOTOMAYOR: [Is] this is a new rule by the Federal Circuit?

MR. WAXMAN: The answer is no. What is new is the 2008 ­­ beginning in 2008 jurisprudence in the Federal Circuit on 271(a) that unnaturally limited the common law attribution rules.

Very little time was spent on statutory construction – what is meant by the term “infringement” in 271(b)? Waxman does lay out his textual argument that infringement in 271(b) is not limited to “direct infringement under 271(a).” but rather offers the following notion:

MR. WAXMAN: A patentholder has the exclusive right to make, 15 sell, use, or offer to sell his invention during the term of the patent. That’s what sets out the metes and bounds of the property right. And any encroachment on that property right is an infringement. . . .

JUSTICE GINSBURG: An infringement without an infringer?

MR. WAXMAN: You can certainly have infringement without an actionable infringer, absolutely. Under anybody’s rule you can do that. The whole debate we have with the other side on the (a) question is how ­­ what attribution rules do or don’t apply. . . . .

JUSTICE SCALIA: What does ­­ what does (b) require? Does it require inducing an infringement or inducing an infringer?

MR. WAXMAN: Inducing an infringement. And I’ll give you a concrete example. Let’s say that there’s a five­step patented method that I know about, and I convince ­ I induce Mr. Panner to do steps 1, 2, and 3 and Ms. Anders to do steps 4 and 5. If I’m doing that because I know about the patent and I want to take advantage of their otherwise innocent performance collectively of the steps, at common law and at patent law, it was uncontroversial that I was liable. I was responsible.

Overall the oral arguments here are difficult to follow and thus the outcome is difficult to predict. The justices are rightly concerned that the their decision on 271(b) is dependent upon the meaning of joint infringement 271(a), but that may only be decided on remand.

JUSTICE ALITO: It’s ­­ it’s a good reason to think that the question before us really has no significance that I can think of unless the ­­ the Court of Appeals ­­ unless the Federal Circuit is right about [the limited scope of 271](a). . . . So you’re asking us to decide a question ­­ to assume the answer to the question on (a) and then decide a question on (b) that is of no value ­­ no significant ­­ maybe I don’t understand some other ­­ I don’t see some other situations where it would apply, and no significance unless the ruling on (a) stands, unless Muniauction is correct?

Waxman expressly suggested that the court go ahead and rule on the 271(a) issue (as it had suggested in a cross petition for certiorari) or simply remand the case to the Federal Circuit to decide the underlying 271(a) issue.

61 thoughts on “Supreme Court Takes-On Question of Joint Infringement

  1. There is a problem.

    In 2011, despite the wealth cases prior to 1952 that inducement to infringe, as well as contributory infringement, were strict liability torts, the Supreme Court, relying on the fractured opinion in Aro II, held in Global-Tech Appliances, Inc. v. SEB SA , 131 S. Ct. 2060, 563 U.S., 179 L. Ed. 2d 1167 (2011), held that inducement to infringe requires knowledge of the patent.

    Thus in the case of a method patent where the party induced is strictly liable for damages for six years past, the party inducing the infringement is not liable until he is placed on notice, including willful ignorance, that the activity he is inducing is covered by a patent. On its face, this is absurd, particularly as it will force patent holders to sue the party who is strictly liable for full damages, potentially leaving the party responsible for the infringement completely immune.

    But consider further, that if the inducer performs even one step of the patent process himself, he becomes not in inducer, but a direct infringer, and is jointly and severally liable for the full damages without regard to his knowledge of the patent. The situation can be better illustrated by another example where the “inducer” performs all but an inconsequential step himself and asks another to finish the final step. Should one party, but not the other, be strictly liable?

    Obviously Supreme Court has to consider overruling the Global-Tech, a case decided just three years ago. Global Tech was incorrectly decided as well as Aro II, and I think the Supreme Court may reach this issue in deciding the Limelight case.

    In Epstein, Richard A. “Theory of Strict Liability, A.” J. Legal Stud. 2 (1973): 151. link to drsjohnsoneducation.com, the author explains that in the common law, one who caused damage to another was strictly liable. Thus there was no excuse that the actions of the person causing damage were otherwise reasonable. There was a trespass, and the trespasser was liable.

    There might be some reason to excuse unintentional patent infringement in the context of contributory infringement, but certainly there should be no distinction between the direct infringer and the inducer in the context of inducement infringement. Both are liabilities should be strict.

    The result of the Supreme Court in Limelight could provide an end around the absurdity discussed above by holding that where the inducer performs even one act of the method claim, he becomes strictly liable. But I think this distinction is artificial.

    Depending on the result in the Supreme Court, I think we have to look to a legislative fix basically to reverse the notion that there is any requirement in infringement that there be knowledge of the patent as a condition for liability. The only exception in the law is in the marking statute were those who make products are obligated to Mark. But here as well, I have also expressed my opinion that the marking statute should be repealed because it too is an absurdity, but for different reasons.

    1. The marking statute was effectively gutted as to being any type of balance responsibility for benefit gained in the AIA give-away.

      Stronger patents – including a presumption that a published patent is known – is the best way forward and more closely aligns with the very reason patents are published in the first place: dissemination of contents.

      You would not believe the number of large corporate inventors I have worked with that tell me that their company refuses to let their people even read patents (for fear of inducing treble costs in any future litigated matter). A system that breeds a rationale (even a greedy rationale) that defeats the intent of having the system should always look at removing such defects.

      Make the presumption that any published patent is known and you will encourage dissemination at an incredible level, fulfilling rather than defeating one of the core purposes of the patent office.

      1. Anon, it appears to me that the opponents of the patent system are moving it away from system of strict liability and accountability in damages to a system where only guilty knowledge of the patent will impose upon the infringer liability. In other words they are trying to transform the strict liability system into a system like torts were only unreasonable actions will subject someone to damages.

        We have to recognize what they are doing and to oppose it at every step.

        1. There is a clear attempt to create an Infringers’ Rights tone to patent law and to remove the nature of “exclusive” from the right. I think this less than “torts” and more like the “efficient breach” in contracts.

          On this much I think we will agree.

        2. opponents of the patent system

          Characterizing people who disagree with your interpretation of a patent statute as an “opponent of the system” is pretty silly, Ned.

          1. MM, I could have with equal accuracy said, “Infringers lobby.”

            There have been attempts in the past to severely limit the patent system or abolish it. There are law reviews on this topic. One big push took place in the mid-1800s.

            The patent troll/business method era has caused a tremendous backlash among American industry who are lobbying like crazy to defend themselves as best they can even to the extent the strip patents of all enforceability. Most of these industries really do not rely on patent protection as business-essential. They are forced to invest in patents only for defensive purposes so that they may cross license and buy their way out of patent disputes. To them the patent system is a drag on business.

      2. The best way to avoid such absurdities as refusing to read patents and the marking statute is to recognize the way the patent system works today.

        There are millions of patents in force and they are dressed in deliberately obfuscatory language because that makes them stronger in litigation. Dissemination of technology by patents is a dead concept in the age of obfuscation. Searching for patents that apply to a product has become impossible as a result.

        So damages should never accrue until notice has been served.

        “A system that breeds a rationale (even a greedy rationale) that defeats the intent of having the system should always look at removing such defects.”

        Exactly. And the way to fix it is to require patentees to give direct notice to suspected infringers.

        It remains to be discussed if such notice should be immediate grounds for a DJ suit.

        1. Owen, I share much of your concern about patent specifications that avoid discussing what the invention is, and patent claims that are no better. I think the Federal Circuit has to do a much better job at policing specifications. I was struck by reading portions of Curtis recently that the courts back in 1800s, were as much concerned for the clarity of the specification as they were of the claims. Take a look at Curtis, §229 this as an example.

          There is a written description requirement for the specification, and requires the specification to identify the invention. If a specification is not written in a way that identifies what the invention is, I would suggest there are grounds for a §112(a) rejection and invalidity defense.

          But I would rather do everything in my power to improve the quality of patent specifications and claims, so as to restore the patent system to its purpose, a grant of exclusive rights in exchange for disclosure of the invention in such a manner as to distinguish it from the prior art, and of how to make and use it.

          So long as the patents law requires strict liability, there will be pressure on the Federal Circuit and the patent office to police both specifications and claims to make sure they are clear. Requiring notice in all cases is a form of surrender.

          1. in such a manner as to distinguish it from the prior art

            Ned, may I remind you of past discussions and the futility of attempting to do as you would attempt here of leaning so heavily on “prior art” when it comes to the pragmatic real world of writing applications?

            You chastised NWPA the other day for his writing on this blog, and neglected to respond to my counterpoint to you. Here, along that same line, it is you that seems the simpleton by not remembering the context, the reality in which we live.

            Plain and simple, it is downright malpractice by today’s standards to hew so closely to your notion of including (and thus necessarily characterizing) prior art in the writing of an application.

            There is a good reason why the Jepson claim format is largely archaic and used in what, less than 2% of today’s cases?

            You cannot ignore that reality.

            That being said, there is nothing at all wrong in seeking better clarity and notice. But such must also take into account what the Court has created. I will remind you again that the patent bar does not live in a vacuum and will respond to the meddling of the Court. Prime example: the Court in KSR has created a double-edged sword. By super-empowering PHOSITA, the Court itself has enabled specifications to be written much more thinly. It has never been required to include in a specification that which may be known to a PHOSITA. Never. This is why “structure” is met with flow charts for software. It is required to be accepted that hardcore actual structure is really affected in machines by software changes. See Alappat. Yes, the machine really does change with the addition of software. That is reality that lies at the heart of the issue.

            Once you accept that (and here, you may choose to accept it for argument’s sake so that you can see the effect of KSR), then you can see that specifications need not include the level of detail of the type of structural change, as PHOSITA necessarily includes that additional art field. Think of it as a natural extension to Team Inventors, and thank the Supreme Court for institutionalizing that change.

            If you were to join this conversation in a fully open and intellectually honest manner, you would recognize that what I share is not only open, not only intellectually honest, but dead nuts accurate.

            1. Anon, you’re absolutely correct that the way the Federal Circuit has structured claim construction, any characterization of the prior art and what is new in the specification can and will be used against you in claim construction to narrow the claims unduly despite that the prosecution history shows that the applicant is entitled to a broader scope.

              What we need is the Federal Circuit to back off on its use of the specification as a form of disclaimer, and to simultaneously require that the specification described how the invention solves a problem, somewhat akin to the European approach that I find laudable.

            2. somewhat akin to the European approach that I find laudable.

              Interesting as a possible change to the law. Discussions here though must start with recognizing what IS the current law, rather than the more typical obfuscations and attempted implicit changes in the law by de facto importation of foreign law.

            3. And please, drop the attempted painting of the source of the problem here being the Federal Circuit – your animus is not helpful.

        2. Owen,

          You completely and absolutely miss the point.

          Your path only leads to more of Big Corp directing its workers to NOT read patents.

          You clench tight your eyes to this most evident outcome. Clearly, you seek to promote the shameless copying until one is caught, infringers’ rights view of the lemming march.

          You seek to make patents even weaker by shifting the onus onto the patent holder to more strenuously enforce their duly granted rights, not recognizing that such necessarily involves the (NOT un)foreseen consequence of increased litigation. You lack the critical thinking ability to see that strong patent rights would reduce litigation, as litigation occurs when both sides see that such may benefit them – the infringer side seeing the opportunity to win, and the patent side seeing litigation as the only remaining way of enforcement (given the weakened stance of negotiating an agreement – if that path is the one the patent holder wishes to take). You also completely neglect the fact that a patent holder has every right to say no to anyone and everyone for the limited duration of their given right. You miss this fundamental aspect of what a patent means. For even in that case that an patent holder rightfully denies ALL from using the patented invention for the life of the right, society STILL has gathered their FULL share of the Quid Pro Quo bargain in that the patent has been published.

          Far far far too often this basic and fundamental understanding of patent law is bushed away, and the inanity of “well, we really should put that to immediate use is unthinkingly embraced. Such is simply NOT what the patent law is, such is simply NOT what the patent law ever was, and such is simply NOT what the patent law ever should be.

  2. I’m a little late to the party on this case. But sometimes ignorance clears the head.

    The question presented in this case is

    “Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a).”

    OK so here is 271(a) “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.”

    271(a) defines an both an “infringer” and an “infringment.” An infringement is when one, “without authority makes, uses, offers to sell, or sells any patented invention..” and an infringment is “whoever” does the same.

    It stands to reason that 271(b), which states that “(b) Whoever actively induces infringement of a patent shall be liable as an infringer” provides an alternative definition of infringer. So anybody who induces infringment (as defined by 271(a)) is also an infringer.

    So the answer to the question presented, “Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under Section 271(a)” is no. If infringement is defined by 271(a) then it stands to reason that when there is no infringment under 271(a) there is no infringer under either 271(a) or (b) because both are predicated on the definition of infringment in (a). If there is no infringment then there is no infringer. So the question presented appears to be settled.

    However, the question presented assumes that there isn’t an infringment under 271(a). This is flat out false. Nothing in 271(a) precludes a finding of infringment based on the facts this case. This becomes apparent when examining the converse of the statement, “If there is no infringment then there is no infringer”: i.e. If there is no infringer, can there be an infringment? In the federal circuit’s view this can be the case because of the “single entity rule.” This is an absurd result . There cannot be an effect without a cause. Infringment cannot arise out of thin air, without an infringer. Further, there is no support in the statute for the “single entity rule.” The statute uses the term “whoever.” “Whoever” can be one person, multiple people, one corporation, two etc.

    This alleged “loophole” in 271 (a)&(b) is therefore easily resolved by eliminating the single entity rule and creating some standard for joint infringment.

    But then what becomes of inducement and contributory infringment? Wouldn’t allowing more then one entity who jointly make, use, or sell an invention under (a) make (b) superfluous? Wouldn’t allowing two entities to split up the steps they infringe make (c) superfluous? Not necessarily, if one adopts the common law standard for a civil conspiracy–that there is evidence of an agreement that two separate entities sought to make use or sell the patent invention by splitting up the method steps or whatnot.

    Is my analysis missing anything?

    1. Ryan, I largely agree. Clearly the single-entity rule is whole cloth, not consistent with the statute, not consistent with establish law, and deserves to be reversed. It is clear to me that Limelight directly infringes as a joint infringer. It also induces infringement of its joint infringers, but this cause of action is, I think, subsumed in the direct infringement case.

      All this mess was spawned by Lemley. Yeah, he of the great reputation. He wrote the article about the so-called problem of divided infringement. There he said,

      “Where one person does not perform each and every step of the claimed
      process, no person directly infringes the claim. Section 271(a) imposes liability on ‘whoever without authority makes, uses, offers to sell or sells any patented invention …. ‘” Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255, 257 (2005) link to ip-counsel.com. Lemley even filed an amicus brief on behalf of Comcast.

      Look to Lemley’s misunderstanding the statute as the source of all this error. But, of course, as an attorney of an Amicus, he was not disinterested, was he?

  3. Re Waxman’s statement in oral argument: The consumer — first of all, consumers aren’t sued, because under the patent law, under like — under — unlike copyright law, there are no liquidated damages. No one sues individual consumers

    the EFF responds:

    Unfortunately, no one corrected Mr. Waxman’s bald, and totally false, statement. Not only are consumers sued for patent infringement, but recent years have seen an explosion in suits against end-users of technology products.

    Patent trolls have sued or threatened to sue tens of thousands of end-users. For example, Innovatio attacked cafes, bakeries, and even a funeral parlor for using off-the-shelf Wi-Fi routers. And the notorious scanner troll, MPHJ, targeted small businesses and nonprofits around the country for using ordinary office equipment.

    link to eff.org

  4. This doesn’t seem complicated – somebody patents a method of making soap, then someone else sends me a mixture with 7 out of eight ingredients already added and the eighth ingredient in the box, with instructions to add the eighth ingredient and mix.

    Why do the computer/electrical/business method haters pretend we haven’t seen the same problem myriad times with different subject matter???

    1. True, it’s been the same for everyone (until recently): individuals performing only the non-infringing steps are not infringers. Fed. Cir. turned that rule on its head. That’s the problem.

      P.S. Congress closed the loophole for product claims. If Congress wanted to do the same, they can.

      1. …or maybe they already have.

        Feel free mmm to take a stab at what I have indicated at posts 5.1 and 5.1.1.2 point 2.1.1.1

  5. What appears to be completely lost in this oral argument is that proof of DIRECT infringement (i.e., a completed act of infringement of the entire claimed invention) as the predicate for inducing infringement under 35 U.S.C § 271(b) is not the same as requiring proof that a SINGLE PARTY would be liable as a direct infringer. In particular, the assumption being made that 35 U.S.C § 271(a) defines what “infringement” is for any of the other subsections is problematic. Nowhere does 35 U.S.C § 271(a) say that it defines “infringement” for the purposes of any of the other subsections, including 35 U.S.C § 271(b), nor does 35 U.S.C § 271(b) refer to 35 U.S.C § 271(a) for such a definition of “infringement.”

    In fact, Congress has already altered the concept of infringement liability (direct or indirect) as always requiring at least one instance of practicing the entire claimed invention when it enacted, for example, 35 U.S.C § 271(f). 35 U.S.C § 271(f) permits liability to occur, whether or not the claimed invention was ever completed by the accused infringer. See Waymark Corp. v. Porta Systems Corp. (Fed. Cir. 2001). Unfortunately this oral argument in Limelight never addresses the impact of 35 U.S.C § 271(f) in which Congress has said (loud and clear) that practice of the entire claimed invention (i.e., direct infringement) is not even required for there to be infringement liability. So any assumption that there must be at least one instance of liability under 35 U.S.C § 271(a) for there to be liability under 35 U.S.C § 271(b) is built on “sinking sand.”

    1. In particular, the assumption being made that 35 U.S.C § 271(a) defines what “infringement” is for any of the other subsections is problematic.

      Notes at Cornell U on (a): The first paragraph of this section is declaratory only, defining infringement.

      Perhaps you meant that defining an infringer was problematic…
      As I have noted several times now, and invite the “vocal” regulars to do, where is the statutory basis for limiting and infringer to being a single entity? Why here in this context is Lemley’s work silently being shoved behind a curtain? His view on group invention was one of the accepted drivers in the AIA to allowing Corporations to prosecute applications in their own name – will somebody (anybody) please tell me why group infringers should not follow the accepted group inventors notion?

      35 U.S.C § 271(f) permits liability to occur, whether or not the claimed invention was ever completed by the accused infringer

      (f) is particularized to “component.” This Court should recognize what that term means and should not make the mistake that just because software claims are readily understood in action terms that no component is involved. Inviting “magic” to make the ‘oldbox’ have or be something that it was not is to endorse the “Morse” mistake.

      1. My main point, anon, is that 35 U.S.C § 271, and especially each of its subparagraphs, should not be (and cannot be) treated as a consistent and cohesive whole as the advocates, as well as Our Judicial Mount Olympus, try to do in Limelight . Instead, and as I pointed out in my 2007 article on infringement issues involving transnational technologies, 35 U.S.C § 271 is a “patchwork” of subparagraphs that provide no cohesive or consistent approach to determining infringement liability. In other words, the interpretation of each subparagraph of 35 U.S.C § 271 has to be treated almost as “unto itself” because of how Congress has progressively added subparagraphs, as well as amending existing subparagraphs. In that regard, note that 35 U.S.C § 271(a) was amended to provide infringement liability for “offers for sale” of the claimed invention, another clear indication from Congress that you need not practice the entire claimed invention to be subject to infringement liability. And as you correctly point out, nowhere does 35 U.S.C § 271 require/say there must be a single entity (as Judge Newman suggested in her dissent in en banc Federal Circuit decision with respect to subparagraph (a)) as to what “whoever” means), and, in fact, subparagraph (b) on inducing infringement requires more than one entity, as there has to be an “induced” as well as an “inducer” entity.

        1. the interpretation of each subparagraph of 35 U.S.C § 271 has to be treated almost as “unto itself” because of how Congress has progressively added subparagraphs, as well as amending existing subparagraphs.

          That’s fine, but it’s hard to escape that (b) requires inducing “infringement” before you get a remedy for an indirect infringement. If there’s no predicate infringement, there’s no indirect infringement. That’s not that hard of a concept to understand and one with which the Justices seem okay.

          The problem is that any other result is somewhat absurd. How is it that (b) can give you a remedy for indirect infringement if the only thing “induced” is non-infringing. This is the problem the Justices struggled with and why they were keen on the construction of (a).

          Also, I’m not the only one to make this point, it seems like (b) could give you other indirect infringements other than infringement under (a). See for example, Congress saying in (e) that it “shall be an act of infringement.” In this case, though, none of those other “infringements” were at issue.

          1. The problem, mmm, is that you cannot read 35 U.S.C § 271 as if it were “static” (i.e., the same as it was when first enacted in 1952), as Our Judicial Mount Olympus appears to want to do. Between 1984 and 1994, Congress has added new subparagraphs (e), (f), and (g), as well as amending subparagraphs (a), (c), and (g) to add the “offer to sell” language. Those new paragraphs, as well as the “offer to sell” language reflect changes, enacted by Congress, to the definition of what constitutes infringement liability under 35 U.S.C § 271. Subparagraph (a) now merely reflects ONE aspect of infringement liability, not all aspects thereof under 35 U.S.C § 271.

            1. Is there any allegation that the type of infringement by Limelight is the type prescribed by (e), (f) or (g)? If not, it’s just a red herring. You might as well point out that 28 USC § 1498(a) also is a type of infringement for the US government.

              The point remains the same: without some form of infringement, there’s no liability for inducing infringement. The only type of original “infringement” alleged is under (a).

              The Federal Circuit thinking its making good policy said that you can also induce infringement by inducing someone to take a non-infringing step.

            2. You’re again missing my point, mmm. I didn’t say that inducement under subparagraph (b) doesn’t require “infringement,” just that such “infringement” need not be by a single entity. What each subparagraph of 35 U.S.C § 271 defines is infringement liability, not a different definition of “infringement.”

        2. Two points in the continuing discussion:

          1) Excellent point on the “offers for sale” with one clarifying question for you:

          Would an “impossibility” defense defeat an “offer for sale?” To focus on this aspect in the singular sense, let’s say I offer for sale to you Widget X that is covered by very complicated article of manufacture Claim 3 of Patent 9999999. However, I neither own any Widget X’s, nor any means of actually making any Widget X’s, nor am I in privy with anyone that could make such.

          I only have a naked offer for sale. Am I guilty of patent infringement?

          2) I wanted to point out NOT that your post was wrong per se, but that a very real legal distinction exists in the statute as written that goes to the heart of the question here before the Supreme Court. Infringement is defined in the Statute, but apparently (as no one yet has pointed to the explicit words), infringER is not.

          Put simply, why are we even struggling to maintain what can only be termed a vestige of form over substance with the notion that infringer must be a single actor? Where are all those that would sing the praises of Prof. Lemley when the natural application of Prof. Lemley’s “It takes a Village” mantra was accepted by Congress in the changes to the AIA for patent prosecution by teams of inventors when it comes to applying (in a perfectly analogous setting) that concept to protecting what those teams of inventors created?

          Why the completely artificial view that inventions are only inventions if those inventions can be squeezed into single-actor-transgressing inventions?

          I have seen ZERO factual, legal, or even policy based arguments squarely dealing with this concept.

          As you point out, 35 U.S.C. 271 is a patchwork. But under any view of that patchwork – even under a forced cohesive view, I do not see the statutory basis for “must-be-single-entity” tradition. Since the Supreme Court seems ever so eager (in their battle with Congress) to beat on the Congress-proxy of the CAFC, why not again here point out that the ‘tradition’ lacks statutory mooring?

          1. As far as your first question on the “impossibility” aspect, anon, I believe lack of availability of claimed may or may not be a defense. I took a look at Transocean which is the most recent case on the “offer for sale” language. In Transocean, it’s clear the accused infringer was offering for sale the claimed invention, the only question being whether the fact that offer was made from Norway (and by implication the device as well) precluded infringement liability (the Federal Circuit ruled it did not). Why I say “may or may not” is based on the nebulous statement in Transocean that: “The offer must be for a potentially infringing article.” In the context of Transocean, it could mean that the “potentially infringing article” was located offshore, but it could also be construed to mean an article not yet in existence. Even so, I would suspect that simply making an “offer for sale” of something for which there is nothing to indicate the accused infringer had the capacity to provide the infringing item wouldn’t be enough.

            As far your second question, I think we’re on the same page, just using different terminology. What each subparagraph of 35 U.S.C § 271 addresses is different ways there can be infringement liability, i.e., who can be successfully sued, however you define what “infringement” is with respect to each of those subparagraphs. Again, I think the view that “infringement” requires a single actor for each subparagraph of 35 U.S.C § 271 is very problematic.

      2. Why here in this context is Lemley’s work silently being shoved behind a curtain? His view on group invention was one of the accepted drivers in the AIA to allowing Corporations to prosecute applications in their own name – will somebody (anybody) please tell me why group infringers should not follow the accepted group inventors notion?

        Maybe because “invention” and “patent infringement” are entirely different legal concepts, and because the mere fact that “groups” of people may be involved doesn’t justify the importation of legal conclusions from one context to the other.

        1. Maybe because “invention” and “patent infringement” are entirely different legal concepts

          Entirely…?

          LOL – try again.

          1. Entirely…?

            LOL – try again.

            LOL – I’ll stand by my statement until you explain in coherent English all the super important similarities between the legal concepts of “invention” and “patent infringement.” I’ll even help you out: both concepts have more than one vowel in them! I guess I was just being unethical by using the word “entirely.” I’ll call the ABA and let them know.

            1. all the super important similarities between the legal concepts of “invention” and “patent infringement.”

              Two sides of the same coin.

    2. EG, you really, really need to read Akamai’s main brief on this point. It is remarkably good, a keeper, a reference manual of sorts.

      Akamai should win on either 271(a) or (b). But their brief makes clear that the Fed.’s “single actor” theory is the aberration — contrary to well developed law of long vintage that needs to be overturned.

      1. Ned,

        I would agree that the “single actor” theory is very problematic under 35 U.S.C § 271, especially given that Congress has added new bases for infringement liability between 1984 and 1994 to the original ones in the 1952 Act that don’t even require practicing the entire claimed invention, e.g., the “offer for sale” language.

        1. EG, read the brief. The “single actor” theory flies in the face of the statutory language itself. The brief cites the Definition Statute that “single” includes the “plural.” “Whoever” means one or more — not one.

          The source of the error of the Federal Circuit is that they simply deny that there can be joint infringement of a method claim.

          That is legal error of the greatest magnitude given that it misreads the statute and is contrary to well-established law.

  6. The court is going to get rid of the Fed. Cir.’s new rule based solely on this exchange:

    MS. ANDERS: I think that’s right. I think another reason the Federal Circuit might not want
    JUSTICE SCALIA: And also avoiding the text of the statute.
    (Laughter.)
    JUSTICE KAGAN: There is that problem. There is There is that problem.
    (Laughter.)

    I am fairly certain that whatever time they gave Mr. Waxman on the policy grounds, the Court is going to go the other way and leave it for Congress to expand the scope of liability. If there is no “infringer” and no “infringement” then there’s no liability under (b) for an inducer.

    I personally think that the Court is going to be vary wary of expanding additional liability. A number of the Justices expressed concern about expanding liability. My favorite bit:

    WAXMAN: … Consumers aren’t sued under patent law for infringement, whether there’s a single user or multiple users.

    JUSTICE KENNEDY: Yet, until we issue the case in your favor.

    Mr. Waxman said, and I don’t think he can support it, that consumers aren’t sued. The recent spate of “consumers” being sued for infringement is quite numerous — plus, why should it matter to much if the end users of purchased technologies are individuals, mom & pop small business, or big companies. He must be taking a very narrow view of consumer too (suggests as much when he talks about Limelight’s consumers being big companies).

  7. When his turn to speak, Waxman hit home the policy concerns:

    MR. WAXMAN: . . . Let’s assume that there is disclosure and patenting of a cure for cancer or a novel treatment for cancer that involves, as they often do, the administration of different drugs sequentially. And two parties get together and say, I’ll administer Drug 1, you administer Drug 2, and we can take advantage of this marvelous patented process without paying anything ­­ giving anything whatsoever to the company that spent a billion dollars and 25 years developing.

    I think this is a bogus example. If two entities are truly acting in concert, then they should be treated as a single infringer. The Federal Circuit’s new approach goes well beyond that scenario.

    1. If two entities are truly acting in concert, then they should be treated as a single infringer.

      Thats what Waxman was saying, isn’t it?

      The Federal Circuit’s new approach goes well beyond that scenario.

      How so? Does the CAFC’s rule create liability for consumers who use a device for its intended purpose and, by so doing, carry out the remaining steps of a patent claim of which the seller was aware? If so, then the CAFC rule does seem to “go well beyond” the scenario of two entities “truly acting in concert.”

      As usual whenever this issue comes up I find myself wondering again: why are so many so-called “inventions” in the computer-implemented arts claimed in a way that requires multiple actors for infringement? Seems like if it were an actual improvement to a computer, it would simply be claimed as such. But that’s not what the computer-implementers are after, are they? They want patent claims that cover what kind of information can be transmitted or processed, using existing technology, and by doing so they seek to control who has access to the information (thereby allowing them to skim money off the technological advances of others).

      1. why are so many so-called “inventions” in the computer-implemented arts claimed in a way that requires multiple actors for infringement?

        1) what is “so many?” How do you know this? Where is the “proof?”
        2) Better point: Who cares? Is it anything more than mere form over substance to arbitrarily force claims to be written in a “single infringer” mode? Why not follow Lemley’s team inventor model with the parallel team infringer model? Heellllooooo…. Anyone out there?

        1. Is it anything more than mere form over substance to arbitrarily force claims to be written in a “single infringer” mode?

          I don’t believe that the decision was “arbitrary”. I believe it was based on the same sorts of policy considerations that the Supreme Court was so intently focused on during the oral arguments.

          what is “so many?”

          Well, apparently enough such patents are being granted and asserted that this has become a “hot” issue for the amici and the government.

          But more importantly, we all see these claims routinely. They’re not unusual, particularly in the computer-implemented arts, where system presents information B to user, then “user” requests information X and system delivers information Y. It’s because information is so amenable to remote processing and transmission that patentees end up trying to protect these remote multi-actor activities. That’s just not true of a typical manufacturing invention. It is very likely true of a lot of junky “manufacturing” “inventions”, however, which would be better characterized as junky “business methods.”

          1. apparently enough

            LOL – apparently you do not recognize that “enough” is “enough” of a weasel word to justify ANYTHING that anyone may have a bug up their hind end and want to pursue an agenda with.

            Not seeing the level of ‘proof’ that you would so clamor for Malcolm. What’s up with that?

      2. Thats what Waxman was saying, isn’t it?

        Waxman is suggesting that this wasn’t the case before the new rule. If there’s action in concert as he described, or an agency relationship, then there’s direct infringement, and you don’t need this new inducement theory.

        As usual whenever this issue comes up I find myself wondering again: why are so many so-called “inventions” in the computer-implemented arts claimed in a way that requires multiple actors for infringement?

        I don’t think there really are that many. As Panner tried to explain, patent attorneys who know what they’re doing don’t write them that way. But if the CAFC’s rule stands, there will be a lot more. I don’t think that’s a good thing.

    2. DanH,

      How would you define “acting in concert?”

      Would you require contractual privity? Master-Slave relationship? Single Control? Or would you look at the (f) parallel and merely hold that a lack of “suitable for substantial noninfringing use” suffices to show “acting in concert?”

      Recognizing that only God creates from scratch, where would you draw the line?

      1. How would you define “acting in concert?”

        As Dennis suggests, I’d look at how “agency” is treated in other areas of law. Contractual privity would generally do it, of course, but wouldn’t necessarily be required. Regarding a “lack of ‘suitable for substantial noninfringing uses’,” that isn’t required for inducement – that’s one of my problems with this whole case. It could be evidence of acting in concert, but wouldn’t necessarily be dispositive.

        1. So if I understand your somewhat opaque answer, your definition of “acting in concert” would not require strict privity (your odd way of phrasing not necessarily be required simplified), but it is unclear how you feel in creating the definition in regards to “lack of ‘suitable noninfringing uses,’ as you retreat to the current problem without actually taking a stand on the point.

          I specifically asked how you would define the term – not looking for you to waffle and dodge that particular point.

          1. I specifically asked how you would define the term – not looking for you to waffle and dodge that particular point.

            That’s nice.

            1. A less opaque answer that includes the point offered to you would be even nicer DanH.

              As it is, your views on this subject remain muddled.

              Can you please try to clarify how you view this issue?

              Thanks

  8. MR. WAXMAN: Inducing an infringement. And I’ll give you a concrete example. Let’s say that there’s a five­step patented method that I know about, and I convince I induce Mr. Panner to do steps 1, 2, and 3 and Ms. Anders to do steps 4 and 5. If I’m doing that because I know about the patent and I want to take advantage of their otherwise innocent performance collectively of the steps, at common law and at patent law, it was uncontroversial that I was liable. I was responsible.

    This part doesn’t even seem controversial.

    Waxman argued that [the Fed Cirs holding was] not really new but rather it is a return to the common law notions that were disrupted by the Federal Circuit’s unnatural limitations on 271(a) joint liability that began in 2008

    I think that should be 2007, right? That was the BMC case. That was followed quickly by Muniauction (2008) which injected some sensibility again (direct infringement with multiple actors if the accused infringer had “direction or control” over the other actors”).

    1. The first part is controversial because there’s no infringer. There’s no obligation for either of them to take any particular steps. Those steps taken by separate people are not infringing steps. This gets to Justice Breyer’s concern that the rule would extend liability to for getting someone to drive a truck as part of a multi-step process in which one step is driving a truck.

      1. The first part is controversial because there’s no infringer.

        But there is infringement — and there is plainly someone who is fairly liable for that infringement. That’s Waxman’s point.

        This gets to Justice Breyer’s concern that the rule would extend liability to for getting someone to drive a truck as part of a multi-step process in which one step is driving a truck.

        Right. It’s wise to be worried about these scenarios (and Breyer seems very worried indeed) but I think the likelihood of a truck driver or a cell phone owner being found liable for infringement would depend on what the rule is.

        1. there’s no infringer. But there is infringement

          mmm – do you understand this point being put forth by Malcolm?

    1. Agreed. They seem quite unwilling to decide this case because they also clearly believe there’s something wrong with simply reversing and allowing people to infringe under circumstances this case. I think they perceive the problem might be in an incorrect view of direct infringement by the Federal Circuit.

      But I don’t think they will rule on that issue until they have the Federal Circuit’s views first. Thus they will asked the Federal Circuit to consider the issue en banc on remand, in the meantime vacating their 271(b) decision so that the Federal Circuit would have no choice but to truly revisit 271(a).

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