Inside a victory for holders of method patents, the government Circuit issued an en banc decision yesterday expanding the scope of direct violation when multiple parties perform different steps of the invention. In the unanimous Akamai Techs. v. Limelight Systems decision, the appeals court provided a well known fact-based test for figuring out when “all method steps could be attributed one entity” so that direct violation are available under 35 U.S.C. § 271(a). Unlike the sooner panel decision which was overturned, the en banc court held that violation can, in certain conditions, be attributed one entity even if there’s an arms-length business model between that entity and yet another parties that perform steps from the patented method.
Akamai addresses the issue of “divided violation,” which takes place when multiple parties combine to do all of the steps of the method patent. Akamai, for instance, holds a patent covering an approach to streaming content on the internet. Limelight, Akamai’s competitor, provides a service performing each step of Akamai’s patent except the ultimate “tagging” step, which Limelight’s customers perform. The word “divided infringement” is one thing of the misnomer, however, since it has lengthy been revealed that direct violation under Section 271(a) occurs only if just one party or perhaps a joint enterprise performs all the steps from the process. Thus, the actual question in divided violation cases is whether or not the entities practicing the claimed steps are in some way u . s .. A “court must see whether the functions of 1 [actor] are attributable to another so that just one entity accounts for the violation,” because the Federal Circuit place it in the newest Akamai decision. This – of prime importance to industries like biotechnology and software that depend heavily on method patents – has vexed courts and litigators during the last decade.
The dispute between Akamai and Limelight enhances the particularly complicated issue of whether a business and it is finish users can be viewed as just one entity for purpose of divided violation. Within the appeal, the government Circuit (also en banc) ducked this and held that Limelight might be held responsible for caused violation regardless of if the patented method might be attributed one entity for purpose of direct violation. The Final Court, however, granted certiorari and held that the defendant can’t be responsible for caused violation under Section 271(b) unless of course just one party has directly infringed under Section 271(a). On remand, therefore, the government Circuit needed to address the issue of direct violation it had formerly prevented.
Initially, in May of the year, a panel from the Federal Circuit held (more than a energetic dissent) that Limelight wasn’t accountable for direct violation. The panel figured that Section 271(a) was restricted to three relationships between your divided infringers: principal-agent relationships, joint enterprises, and contractual plans, which may “typically not trouble an arms-length seller-customer relationship.” This decision, along with the final Court’s opinion on caused violation, made an appearance to allow companies to prevent any method patent by simply organizing for his or her customers or any other arms-length entity to do a minumum of one from the claimed steps.
In yesterday’s en banc decision, however, the government Circuit relaxed this test to permit a finding of direct violation inside a wider selection of conditions, such as the details from the Akamai-Limelight dispute. Noting that “we still consider general concepts of vicarious liability” in assessing divided violation, a legal court held that “liability under § 271(a) can be found when an alleged infringer conditions participation within an activity or receipt of the benefit upon performance of the step or steps of the patented method and establishes the technique or timing of this performance.” When this happens, “the third party’s actions are related to the alleged infringer so that the alleged infringer becomes the only actor chargeable with direct infringement” – whether or not the 3rd party and also the alleged infringer otherwise come with an arms-length relationship. A legal court also organized a four-element test when ever entities have created some pot enterprise, so that the functions of either might be attributed to another. To sum it up, the government Circuit put down what seems to become a flexible, fact-specific standard that utilizes traditional tort liability concepts to find out “whether all method steps could be attributed one entity.”
Though Akamai and also the cases that preceded it came about within the software context, the choice has significant implications for that biotechnology industry. Method patents are frequently the main ip connected with biologic medicines, a lot more so compared to small molecule drugs. Because the Biotechnology Industry Organization (BIO) notes within an amicus brief it filed within the Akamai situation, “[p]roprietary biotechnological processes, and method patents protecting them, frequently really are a biotechnology company’s best assets.” Because multiple entities are capable of doing the steps of merely one patent, the opportunity to legally attribute their functions to 1 “mastermind” infringer constitutes a biotechnology company’s patent portfolio a lot more secure.
BIO’s brief contains a good example of how divided violation might operate in the biotechnology context. The “foundational” invention of biotechnology is the opportunity to cut DNA from one organism and splice it in to the genome of some other, therefore creating recombinant DNA. This invention is the topic of U.S. Patent No. 4,237,224. The ‘224 patent requires, essentially, a four-step process: (1) developing a fragment of DNA (2) mixing that fragment with another inside a unicellular organism (3) growing that organism using the recombinant fragment and (4) isolating the bacteria which contain the novel DNA. Based on BIO, this patent “launched a business.Inches Without some type of vicarious liability, however, this patent “could be easily circumvented by getting one party perform steps (1) and (2) from the patented method after which getting another party carry out the remaining steps (3) and (4).” Many biotech processes could be similarly split between different entities, making divided violation an issue for biologic patents.
Method patent holders might be able to breathe just a little simpler following a Akamai decision, likely the final inside a situation that sprawled over almost ten years and incorporated a visit to the Top Court. Limelight, however, wasn’t so lucky: the government Circuit decision reinstated a $45 million jury verdict against it.