Akamai v. Limelight (Fed. Cir. 2015) (AkamaiV)
When it sat en banc in this case, the Federal Circuit found sufficient evidence to find Limelight liable as a direct infringer under 35 U.S.C. § 271(a). The noted that an entity can be held liability as a direct infringer based upon another’s actions “in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.” The court held that “liability under § 271(a) can also be found when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”
In Akamai, the accused infringement – Limelight – performed the bulk of the steps of Akamai’s patented method, and then provided instructions to its customers on how to complete the remaining steps. Completion of those steps are a necessary element of obtaining Limelight’s services. The en banc panel found “In sum, Limelight’s customers do not merely take Limelight’s guidance and act independently on their own. Rather, Limelight establishes the manner and timing of its customers’ performance so that customers can only avail themselves of the service upon their performance of the method steps.” That relationship thus constituted being “directed and controlled” by the accused infringer.
Because some potential issues remained, the en banc court then remanded the case back to the original Federal Circuit panel for clean-up. On remand, the panel has rejected a set of arguments brought by Limelight in a cross-appeal – finding them to “have no merit.”
On remand, the district court has thus been ordered to reinstate the 2008 jury verdict of infringement and the $40 million+ lost profit award. Its hard to believe that this case has been pending since 2006!
What’s with the apostrophe?
No doubt that BMC Resources and Muniauction would have been decided in favor of the patent owner had the present rules regarding method claims been in place then. Lemley’s effort the sabotage the law of direct infringement involving method claims has justifiably has been defeated.
We should all celebrate.
Even the AIPLA.
Lemley takes one on the chin.
ARIOSA DIAGNOSTICS v. VERINATA HEALTH, INC.
link to cafc.uscourts.gov
This was a appeal from a PTAB finding in favor of the patent owner on all claims because the petition did not prove motivation to reconstruct the references in making the required combination to demonstrate all the elements of the claims.
The Board ruled that the petition did not explain why a PHOSITA would modify several references to obtain the patented diagnostic method. The petitioners reply brief introduced new expert testimony and focused on portions of the some of the references not discussed in the petition. It also heavily relied upon a particular reference to show the level of skill in the art.
The Federal Circuit sustained the Board’s refusal to consider the petition’s reliance on portions of the references not previously discussed, but remanded back for the Board’s consideration of the particular reference because the reference was of record for demonstrating the background level of skill in the art.
The Board had excluded consideration of the reference for proving motivation because it was not relied on in the petition for that reason. However the Federal Circuit held that the board should have considered the reference for its discussion of the level of skill in the art because that was the reason for the reference being cited in the petition. Whether this would be sufficient to carry the day for the petitioner was left to the Board on remand.
From anecdotal evidence, the focus of a lot of appeals from the PTAB has been about petitioners introducing new evidence and arguments in their replies and the PTAB relying on such. All of these heretofore have resulted in Rule 36 affirmances. The difference here is that the PTAB followed its own rules and did not consider the new evidence and argument, resulting in an appeal by argued by Lemley. This is why, I think, the Feds finally discussed the problem.
Hopefully, after this opinion, the Feds will actually force the PTAB to follow its own rules in every case.
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