Supreme Court Requires Single Party to Perform all Steps for Inducement of Infringement

Posted on Jun 2, 2014 in Blog

On June 2, 2014, the US Supreme Court ruled that there can be no liability for inducement of infringement under 35 USC 271(b) unless a single actor performs all steps of a method claim. In doing so, the Court reversed a 2012 en banc ruling by the Federal Circuit that allowed a finding of induced infringement even if no one is liable as a direct infringer where one party performs some of the steps and directs another to perform the remaining steps. Limelight Networks, Inc. v. Akami Technologies, Inc., 572 U.S. _______ (2014).

At issue in Limelight was U.S. Patent 6,108,703, which claims a method of internet content delivery. A step in the process, called “tagging”, determines where portions of a customer’s data is stored. Limelight does not perform the tagging step, its customers do, and hence the dispute over whether Limelight induced infringement. The Federal Circuit sitting en banc ruled that under 271(b) indirect infringement could be found even though no single party performed all of the steps of the claim.

In an opinion written by Justice Alito, the Supreme Court reversed the Federal Circuit, stating that “there has simply been no inducement of infringement of the method in which respondents have staked out an interest, because the performance of all the patent’s steps is not attributable to any one person.” In ruling as such, the Court rejected the prevailing Federal Circuit presumption that the standard requiring a single actor under direct infringement under 271(a) is somehow different for inducement of infringement under 271(b), which could be found with multiple actors performing method claim steps.

The new ruling is expected to have wide effect, especially in Internet-related and other data technology fields where processes are often performed in multiple stages by different parties.