Method Claims: U.S. Supreme Court Resets Infringement by Inducement Relative to Performance by a Single Entity
Whether you are an inventor or another patent-minded professional, you understand that the enforceability of a patent depends upon whether the claims are properly written to exclude competitors. For a method claim, the enforceability of the patent claim may hinge on whether the method steps are performed by one entity or multiple entities.
On June 2, 2014, in the decision Limelight Networks, Inc. v. Akamai Technologies, Inc., the U.S. Supreme Court provided new guidance on whether a defendant may be liable for inducing infringement of a method patent claim under 35 U.S.C. § 271(b). This decision reversed the Federal Circuit’s 2012 decision in Akamai v. MIT, which had found infringement by inducement when the steps of a method claim were performed by multiple entities. The Limelight Supreme Court held that the Federal Circuit had erred in finding induced infringement where the accused infringer and its customers had jointly performed the claimed steps. Performance of the method claim’s steps by a single entity would have constituted direct infringement.
With reference to long-standing Supreme Court precedent (e.g., Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518 (1972)), the Supreme Court explained the consistency between patent infringement law under both direct and indirect theories. The Court concluded that a different rule for inducement would be unnecessary and illogical. In accordance with its precedent in Deepsouth, the U.S. Supreme Court held that where “performance of all the claimed steps cannot be attributed to a single person, so direct infringement never occurred,” and therefore “Limelight cannot be liable for inducing infringement that never came to pass.” Limelight, 572 U.S. at 7.
Though the Federal Circuit’s 2012 Akamai holding has been reversed, the importance of previous decisions and related trends should not be overlooked as the law in this area may continue to evolve. For example, when preparing method claims in which the claimed steps might be performed by two different entities (such as a service provider and its customer), consider that the method claim may be more readily enforced against a competitor if the claim leaves out steps that can be performed by a second entity. In addition, keep in mind that other types of claims, such as apparatus claims and system claims, may be more readily enforced against multiple entities. By drafting a patent application with multiple types of claims, the value of the patent claims might be significantly enhanced.
© Crawford Maunu PLLC. All rights reserved. This material is for informational purposes only and should not be construed as legal advice. Also, as this material was prepared by individuals and not prepared by Crawford Maunu PLLC acting on behalf of any particular client/factual situation, this material should not be construed as providing a specific position applicable to any legal matter. Communication of this material is not intended to establish an attorney-client relationship. Legal advice should be sought from legal counsel.