Joint Tortfeasor Principles Not Applicable to Direct Infringement: Federal Circuit | Practical Law

Joint Tortfeasor Principles Not Applicable to Direct Infringement: Federal Circuit | Practical Law

In Akamai Technologies, Inc. v. Limelight Networks, Inc., the US Court of Appeals for the Federal Circuit affirmed the district court's finding of noninfringement, holding that Limelight should not be held liable for direct infringement under joint tortfeasor principles.

Joint Tortfeasor Principles Not Applicable to Direct Infringement: Federal Circuit

Practical Law Legal Update 3-613-1885 (Approx. 4 pages)

Joint Tortfeasor Principles Not Applicable to Direct Infringement: Federal Circuit

by Practical Law Intellectual Property & Technology
Published on 14 May 2015 • USA (National/Federal)
In Akamai Technologies, Inc. v. Limelight Networks, Inc., the US Court of Appeals for the Federal Circuit affirmed the district court's finding of noninfringement, holding that Limelight should not be held liable for direct infringement under joint tortfeasor principles.
On May 13, 2015, in Akamai Technologies, Inc. v. Limelight Networks, Inc., the US Court of Appeals for the Federal Circuit affirmed the US District Court for the District of Massachusetts's finding that Limelight Networks, Inc. did not infringe US Patent No. 6,108,703 (the '703 patent) under 35 U.S.C. § 271(a) (Nos. 2009-1372, -1417, -1380, -1416, (Fed. Cir. May 13, 2015)). The Federal Circuit rejected Akamai Technologies, Inc.'s argument that Limelight should be held liable for direct infringement under joint tortfeasor principles.
On appeal for the second time after being remanded by the US Supreme Court (Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (U.S. 2014)), this case involved Akamai's '703 patent which covers a method of delivering content by tagging certain internet content for storage on Akamai's servers. The record showed that Limelight did not perform the tagging step, which was performed by Limelight's customers.
As it had done in the first appeal, the Federal Circuit affirmed the district court's finding of no direct infringement under 35 U.S.C. § 271(a) finding that:
  • Limelight had not performed all the steps of the asserted method claims.
  • There was no basis to impose liability on Limelight for the actions of its customers who had carried out the remaining steps of the claimed method.
The Federal Circuit rejected Akamai's argument that Section 271(a) incorporates principles of joint tortfeasor liability, reasoning that:
  • The statutory scheme of 35 U.S.C. § 271 does not incorporate joint tortfeasor liability because Congress expressly outlined in Section 271 (b) and (c) the only situations in which a party not directly infringing under Section 271(a) could be held liable for something less than infringement. The court explained that the broad attribution standard Akamai was proposing, where Limelight could be held liable for causing or intending the tagging acts of its customers, would make Section 271(b) and (c) redundant.
  • The court's divided infringement case law was based on the principles of vicarious liability. The court emphasized that under the single entity rule, direct infringement of a method claim requires that all steps of the claim be performed by or attributed to a single entity such as in:
    • principal-agent relationships;
    • contractual arrangements; or
    • joint enterprises.
  • Importing joint tortfeasor liability into Section 271(a) would violate the limits on joint tortfeasor liability, including:
    • the requirement that liability extends only to defendants that are personally guilty of tortious conduct, and not to actors whose innocent actions coordinate to cause harm;
    • the rule of action in concert, which occurs in mutual agency or cooperation agreements, and not when parties act independently for their own benefit; and
    • the knowledge of harm requirement, which is contrary to Supreme Court precedent stating that a direct infringer is liable regardless of knowledge or intent.
Applying this analysis, the Federal Circuit found that Limelight was not liable for direct infringement under 35 U.S.C. § 271(a) because Akamai failed to meet its burden of establishing vicarious liability.
In a dissenting opinion, Judge Moore stated that common law joint tortfeasor principles should apply to this case. Judge Moore elaborated that failing to find infringement on that basis would create a gaping hole in liability and allow Limelight to receive economic benefit from the patented method without paying royalties.