In Akamai Technologies v Limelight Networks (Fed. Cir. No. 2009-1372, Dec. 20, 1010), the Court addressed the issue of when two parties may be considered to be jointly infringing a patent. It concluded that joint infringement requires an agency relationship or certain contractual obligation between the jointly infringing parties.
In the case, Akamai asserted that Limelight directly infringed a patent directed to a method of delivering content over the web. The patent claims each required a step of tagging objects on a web page. There was no dispute that Limelight did not tag objects. However, Limelight’s user documentation included instruction for tagging, and its customers would typically perform the tagging step.
Akamai asserted that Limelight and its customers directly infringed the patent based on Limelight’s instructions and customer contract terms. In response, Limelight pointed to the Federal Circuit’s prior opinion in Muniauction Inc. v. Thompson Corp., 532 F.2d 1318 (Fed. Cir. 2008), which held that an accused infringer’s written instructions and control over customer access were not sufficient to establish direct infringement.
The court agreed with Limelight, stating:
This court therefore holds as a matter of Federal Circuit law that there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.
Notably, the case does not address issues of contributory infringement or inducement of infringement. So, the case does not mean that a party can always avoid any liability when other parties perform certain steps of a method. However, it does establish a specific rule for an analysis of direct infringement.