Divided Infringement Steps into the Limelight

by Foley Hoag LLP

Implications of Limelight v. Akamai

The United States Supreme Court ruled Monday that a defendant cannot be liable for inducing infringement unless the induced party directly infringed the patent. This means, under current Federal Circuit law, that there is no induced infringement of a method patent unless every step of the method can be attributed to a single actor. The unanimous ruling in Limelight Networks, Inc. v. Akamai Technologies, Inc. reversed an en banc ruling of the Federal Circuit.

The Limelight case began when Akamai sued Limelight for infringement of a patented method for delivering internet content. Limelight argued in defense that neither Limelight nor its customers performed all of the claimed steps; Limelight performed most of the steps and instructed its customers to perform the remaining one, a step of “tagging” web content for storage.

Limelight relied on Muniauction v. Thompson Corp., a case in which the Federal Circuit held that there can be no direct infringement of a method claim unless a single actor performs (or directs or controls) all of the steps. Direction or control may arise from an agency relationship or be imposed by contract. Because Limelight’s customers were not Limelight’s agents and were not contractually obligated to perform the “tagging” step that Limelight itself did not perform, under the Muniauction rule, there was no direct infringement by anyone.

Akamai had challenged the Muniauction rule in the Federal Circuit as too narrow, but that court reached its decision on other grounds. Because of that, the Supreme Court declined to address the Muniauction rule. However, in discussing Muniauction, the Court raised the “possibility that the Federal Circuit erred by too narrowly circumscribing the scope of [direct infringement under] § 271(a).” It noted that the Federal Circuit could revisit the scope of the Muniauction single-actor rule during further proceedings in Limelight, leaving the door open to alternative theories for attributing performance of all the claimed steps to a single entity.

Unless the Federal Circuit revisits the Muniauction rule, the practical impact of Limelight is that there can be no inducement liability unless a single actor performs, or directs or controls, all of the steps of the claimed method. This has significant implications for the enforcement – and hence the value – of claims drawn to methods, which have long been an important type of patent claim.

New Challenges in the Enforcement of Method Claims

The most immediate consequence of the Limelight ruling is that patent claims typically practiced by multiple actors may be difficult to enforce unless the patentee can show that one of the actors directed or controlled the activities of the others. The ruling will have broad impact on patents covering internet transactions, mobile telephony, and other distributed activities. In the life sciences, claims drawn to methods that include both diagnosis and treatment steps may be unenforceable if one person (such as a laboratory) provides or collects diagnostic information while another (a physician) treats the patient.

Patent prosecutors have long sought to avoid relying on claims that require multiple actors for infringement, but the 2012 Supreme Court ruling in Mayo v. Prometheus caused many patent prosecutors to alter that practice. In Mayo, the Court invalidated as unpatentable subject matter a method claim drawn to evaluating drug dosage. The claim might have been valid had it included the step of treating a patient in response to the evaluation, but in the wake of Monday’s decision, that solution might make the claim effectively unenforceable unless the treating physician performed the diagnostic evaluation.

The Limelight ruling adds to other recently imposed hurdles to the enforcement of method claims under inducement theories. In 2011, the Supreme Court ruled in Global-Tech v. SEB that a company is not liable for inducing infringement of a method unless that company knows that the “induced acts constitute patent infringement.” The Federal Circuit extended this ruling last year, holding in Commil v. Cisco that if the inducer has a good-faith belief the patent is invalid, it may lack the knowledge required by Global-Tech. These developments have increased the difficulty of proving induced infringement of method claims.

Implications for Patent Litigation

The Limelight ruling confirms the potency of defenses based on divided infringement. It will also force courts to delve into disputes over the interpretation of claim elements that are not explicit about who performs a particular step or where it is performed.

Any plaintiff seeking to enforce a method claim should consider these issues early in the case, including the extent to which problems can be avoided through claim construction. And any defendant should be alert to opportunities to take advantage of inducement defenses based on these evolving doctrines.

Parties evaluating their freedom to operate in the face of possibly relevant method claims should consider design-around strategies that avoid a single actor performing, or directing or controlling, all of the steps of the claimed method. They must be mindful, however, that such strategies may ultimately fail if the Muniauction rule is altered.

Implications for Patent Prosecution

Unless the Federal Circuit reconsiders the Muniauction rule, prudence dictates that patent practitioners draft method claims that focus on the activities of a single actor even when the invention as a whole can potentially involve multiple actors.

For example, a diagnostic method could be drafted to describe only activities performed by a laboratory, so that the claim could involve both an assessment and a treatment recommendation. Similarly, a therapeutic method could be written to include assessing diagnostic information and treating based on the assessment. In either case, the company providing the diagnostic test could be sued for inducing the direct infringement of the laboratory (in the first case) or the physician (in the second). (Under 35 U.S.C. §287(c), the physician is immune from liability for infringement, but the immunity would not bar a suit against the diagnostic company for inducing the physician’s infringement).


DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

© Foley Hoag LLP | Attorney Advertising

Written by:

Foley Hoag LLP

Foley Hoag LLP on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at info@jdsupra.com. In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at: info@jdsupra.com.

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.