271(a) Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.Now for some facts. Akamai was the exclusive licensee of a patent for a method of delivering electronic data using a content delivery network (CDN). One of the steps claimed for this patent was called "tagging". Limelight Networks ran a CDN that, as luck would have it, performed several of the steps claimed in the patent -- but the "tagging" was done by its customers, not by Limelight itself. Under Federal Circuit case law, liability for direct infringement under 35 USC. §271(a) requires performance of all steps of a method patent to be attributable to a single party -- a position that was most recently refined in Muniauction, Inc. v Thomson Corp., 532 F. 3d 1318. which drew a contrast between defendants who "masterminded" an infringement carried out between different entities and those whose involvement was of the "arm's-length" variety.
271(b) Whoever actively induces infringement of a patent shall be liable as an infringer.
The Supreme Court disagreed, reversing and remanding the action and holding that a defendant was not liable for inducing infringement under §271(b) when no one had directly infringed under §271(a) or any other statutory provision.
As to liability for inducement, this must itself be predicated on direct infringement, said the Supreme Court, adding that its reading of §271(b) was reinforced by §271(f)(1):
Whoever without authority supplies or causes to be supplied in or from the United States all or a substantial portion of the components of a patented invention, where such components are uncombined in whole or in part, in such manner as to actively induce the combination of such components outside of the United States in a manner that would infringe the patent if such combination occurred within the United States, shall be liable as an infringer.This illustrates that Congress knows how to impose inducement liability predicated on non-infringing conduct when it wishes to do so. The notion that conduct which would be infringing in altered circumstances can form the basis for contributory infringement has been rejected -- and there is no reason to apply a different rule for inducement.
|Patent litigation is only war|
carried out by other means ...
Since the question before the Supreme Court was clearly focused on §271(b) and presupposed that Limelight has not committed direct infringement under §271(a), the Court declined to address whether the Federal Circuit’s decision in Muniauction was correct.
This Kat is reluctant to pass comment on matters of US law, which he views with a level of interest that runs higher than his level of knowledge. It seems to him however that the US Supreme Court's reading of §271 is coherent and makes good business sense too. He also supposes, without expert knowledge, that the patentee would have had an opportunity to claim an invention comprising a CDN system in which the "tagging" was performed by a third party. He however welcomes comments from those more familiar with the US law as to how this ruling will affect existing understanding and business practice.
Harry Lime here
Harry Lime theme here (earworm warning)