The scope of patent protection afforded under a patent is defined by the claims. As a general rule, a claim can only be infringed by a single party that practices all of the limitations of the claim. However, what happens if one party outsources a particular step of a method invention or claim to a third party? What if the party provides instructions to the a customer to perform one or more of the steps? Does this party avoid infringement because this party has not performed all of the required steps of the method? Generally, the patentee seeks liability for joint infringement.  This was the issue in Akamai Tech. v. Limelight Networks, Inc. (Fed. Cir. Dec. 20, 2010).

The patent at issue in Akamai is related to reducing load on a network when retrieving webpages. Typically, the information on a particular webpage includes text as well as images. The webpage itself may include the text but typically the image is merely a link to the actual image. When the user retrieves the webpage, the text information is served up but the images are referenced only as links on the webpage. The server sends a request to retrieve the images and serves it up to the end user.

The patent at issue divided the load on the network by saving the images on a separate server. In doing so, the load on the content server was reduced. However, in dividing the load, the end user had to redirect the image links to the separate server in a process identified as tagging. Tagging is one of the required steps of the method claim for infringement. Limelight provided a service to reduce the load on a network by storing the images of a webpage on separate server. However instead of tagging the images, Limelight provided extensive instructions and assistance to customers to tag their own images.

The court held 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.” In this case, customers were not acting in an agency relationship to Limelight. If the customers did something wrong, then Limelight would not be held vicariously liable for the customer’s actions. As for contractual obligation, Limelight’s customers were never contractually obligated to tag. They could if they wanted to. The court dismissed the amount of instructions that Limelight provided to its customers regarding tagging. It didn’t matter that it looked like they were encouraging such step. The court strictly looked to the fiduciary relationship between the parties and whether one party was contractually obligated to perform certain steps for the other party.

Each case illustrates what to do and what not to do. This case illustrates the need to obtain claims drafted toward a particular entity without any extraneous steps or limitations so that the patentee does not have to seek redress based on joint infringement. Patent attorneys draft claims with different entities in mind. For example, certain claims are directed to the end user, the manufacturer, the retailer, etc. Other claims are directed to the system, a first component of the system, a second part of the system, the combination of first and second parts of the system or an intermediate part which communicates between the first and second parts of the system. The claiming strategy for each invention differs. Unfortunately, there is no one size fits all claim strategy for all inventions.

On the other hand, this case illustrates a technique to avoid patent infringement. In particular, one can look at the method claims to determine whether any of the steps recited in the method can be off loaded to another entity.

I invite you to contact me with your patent questions at (949) 433-0900 or James@OCPatentLawyer.com. Please feel free to forward this article to your friends. As an Orange County Patent Attorney, I serve Orange County, Irvine, Los Angeles, San Diego and surrounding cities.

In In Re Bilski, the Federal Circuit rejected numerous tests that were used in various judicial opinions. The Federal Circuit held that the test to use is the machine-or-transformation test which states that a process is eligible for patent if: “(1) it is tied to a particular machine or apparatus, or (2) it transforms a particular article into a different state or thing.” In Re Bilski, 2007-1130 (Fed. Cir. 2008).

The Federal Circuit expressed two corollaries for the machine-or-transformation test: (1) a process that preempts an entire field is not eligible for patent protection and (2) insignificant post solution activity will not transform an unpatentable principle into a patentable process.