Akamai Technologies, Inc. v. Limelight Networks, Inc.
The Federal Circuit affirmed the decision on appeal from the U.S. District Court for the District of Massachusetts in Akamai Technologies v. Limelight on December 20. Plaintiff Akamai appealed the district court’s judgment as a matter of law for noninfringement as well as the district court’s construction of some claims of the asserted internet content delivery method patents.
Defendant Limelight undisputedly did not perform all of the steps of the asserted method claims. Instead, it gave its customers, internet content providers, information necessary to perform some of the steps of processes that allegedly infringed Akamai’s patents. Akamai argued that Limelight and its customers were jointly liable for infringement, but the district court instead granted judgment as a matter of law for noninfringement due to the nature of the relationship between Limelight and its customers.
In affirming the district court’s judgment as a matter of law, the Federal Circuit noted its precedents stating that direct infringement requires a single party to perform every step of a claimed method, and that any infringement at all requires that one party exercises “control or direction” over every step in the entire claimed process. The Federal Circuit also noted its previous rulings that merely furnishing instructions is not enough to constitute “control or direction.” The court then went on to state that control, direction, and instruction are considerations, but that where different parties perform different portions of the alleged infringement, the patent holder must show that the relationship between the parties was such that one party is responsible for all parties’ steps in the alleged infringement. An agent-principal relationship, a term defined by the Supreme Court and by the Restatement of Agency, is such a relationship. This agent-principal relationship, the Federal Circuit ruled, exists when there is a fiduciary relationship with mutual assent or where independent parties form a contract in which the principal is contractually obligated to perform steps of the claimed method for the other party.
Here, Limelight was providing instructions for its customers to perform the accused activities, which the customers agreed to perform in carrying out Limelight’s services. Both the district court and the Federal Circuit found that Limelight’s customers were not under Limelight’s control, were not contractually obligated to participate in alleged infringement, and therefore were not acting as its agents. Because the asserted claims required the alleged activities of both Limelight and its customers, and because there was no agency relationship between the two parties, the Federal Circuit affirmed the judgment of noninfringement. The court also noted that problems such as these can usually be prevented by good claim drafting that covers the acts of a single party.
The Federal Circuit also addressed issues of claim construction, finding for Limelight. Because Akamai acknowledged that Limelight did not infringe under Limelight’s construction, the Federal Circuit affirmed the judgment of noninfringement.
This case underscores the importance of good claim drafting. A well-written method claim covers steps that are likely attributable to a single party, without including any steps that an otherwise-infringing party could expect a third party to perform of its own accord. Without care to draft claims with these concerns in mind, patent applicants may later have difficulty showing infringement, as Akamai did here.