Akamai I

(2014), rev’d, 134 S. Ct. 2111, 2115 (2014), vacated, 571 F. App’x 958, 958 (Fed.

Cir. 2014) (per curiam), aff’d, 786 F.3d 899, 915 (Fed. Cir. 2015), rev’d, 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc; per curiam), aff’d in part, rev’d in part, 805 F.3d 1368, 1372 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 1661, 1661 (2016).

42 Akamai III, 692 F.3d at 1306; Peter J. Corcoran, III, Strategies to Save Resources and Reduce E-Discovery Costs in Patent Litigation, 21 TEX.INTELL. PROP.L.J. 103, 131 (2013).

43 Akamai III, 692 F.3d at 1306; Corcoran, III, supra note 42 (a party may be liable for induced infringement even if it does not directly perform any steps of a method claim).

44 614 F. Supp. 2d 90 (D. Mass. 2009), aff’d, 629 F.3d 1311, 1314 (Fed. Cir.

McKesson Info. Solutions LLC v. Epic Systems Corp. (McKesson I),⁴⁵ two district court decisions that could not find direct infringement.⁴⁶ In Akamai I, the patentee (Akamai Technologies, Inc.) sued the defendant (Limelight Networks, Inc.) for patent infringement.⁴⁷ However, the district court affirmed the jury’s finding of no infringement because no single entity performed all claimed steps.⁴⁸ In McKesson I, the patentee (McKesson Information Solutions LLC) sued the defendant (Epic Systems Corporation) for the infringement of its method patent.⁴⁹ However, the district court found no induced infringement because no single entity performed the claimed method.⁵⁰

The Akamai III approach was then rejected by the Supreme Court.⁵¹ In 2014, the Supreme Court in Limelight Networks, Inc.

v. Akamai Technologies, Inc. (Akamai IV),⁵² confirmed that a person liable for induced infringement of a method claim must

2010), vacated, 419 F. App’x 989, 989 (Fed. Cir. 2011), aff’d, 786 F.3d at 915, rev’d, 797 F.3d at 1022, aff’d in part, rev’d in part, 805 F.3d at 1372, cert. denied, 136 S. Ct. at 1661.

45 No. 1:06–CV–2965–JTC., 2009 WL 2915778 (N.D. Ga. Sept. 8, 2009), aff’d, No. 2010–1291, 2011 U.S. App. LEXIS 7531 at *1 (Fed. Cir. Apr. 12, 2011), vacated, 463 F. App’x 906, 906–07 (Fed. Cir. 2011) (en banc; per curiam), rev’d, Akamai III, 692 F.3d at 1319.

46 See Akamai III, 692 F.3d at 1306–07 (“In the respective district court cases, Limelight and Epic were held not to infringe the patents asserted against them,”

and since both cases were so similar, they were consolidated); Mark Tomlinson, Whodunnit? Divided Patent Infringement in Light of Akamai Technologies, Inc.

v. Limelight Networks, Inc., 7 J.BUS.ENTREPRENEURSHIP &L. 130, 135–36 (2013) (in Akamai III, the agreements between Limelight and Limelight’s customers . . . were an example of arms-length dealings specifically exempted in BMC, and in McKesson, the district court found no infringement because Epic exercised no direct control over the users’ conduct).

47 Akamai I, 614 F. Supp. 2d at 100.

48 See id. at 122–23 (discussing how Limelight did not exercise the requisite direction or control over its customers to be held liable for infringement).

49 McKesson I, No. 1:06–CV–2965–JTC., WL 2915778 at *1.

50 See id. at *6 (explaining how McKesson could not demonstrate that any single party directly infringed the patent).

51 Akamai IV, 134 S. Ct. 2111, 2115, vacated, 571 F. App’x 958, 958 (Fed. Cir.

2014) (per curiam), aff’d, 786 F.3d 899, 915 (Fed. Cir. 2015), rev’d, 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc; per curiam), aff’d in part, rev’d in part, 805 F.3d 1368, 1372 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 1661, 1661 (2016); Jennifer Seraphine & Heather Potts, Update on the U.S. Supreme Court’s Akamai Decision: Induced Patent Infringement Must be Predicated on Direct Infringement by a Single Actor, 61–AUG FED.LAW. 77, 77 (2014).

52 134 S. Ct. 2111 (2014), vacated, 571 F. App’x at 958, aff’d, 786 F.3d at 915, rev’d, 797 F.3d at 1022, aff’d in part, rev’d in part, 805 F.3d at 1372, cert. denied, 136 S. Ct. at 1661.

induce only one single entity to perform all claimed steps.⁵³ Akamai IV caused interactive technology patents to more likely become unenforceable under the law of either direct infringement or indirect infringement again.⁵⁴ However, the Supreme Court invited the Federal Circuit to revisit the “single entity” rule and implied that the loophole might be solved in another manner.⁵⁵

In 2015, the Federal Circuit in Akamai VI⁵⁶ issued an en banc decision to react to the Supreme Court and expanded the traditional “control” or “direction” test.⁵⁷ Akamai VI revisited the

“single entity” rule and decided to modify it.⁵⁸ Akamai VI added a new evidentiary rule to the “control” or “direction” test and also adopted and merged the law of “joint enterprise” into the “single entity” rule.⁵⁹ Now, an interactive technology patent may be infringed under 35 U.S.C.A. § 271(a), even when the accused infringer requires some steps of the patent to be performed by its users or customers.⁶⁰

This article is intended to explore the transformation of the

“single entity” rule under 35 U.S.C.A § 271(a). First, the background of the Federal Circuit’s Akamai III decision is examined in order to highlight the loophole in 35 U.S.C.A.§ 271(a).

Second, the Federal Circuit’s new “single entity” rule under Akamai VI is analyzed. Lastly, the paper discusses why Akamai VI is important to the protection of interactive technology patents.

II.INDUCEMENT-BASED SOLUTION UNDER AKAMAI III A. Factual Background

1. Akamai I

In Akamai I,⁶¹ the patent-in-suit, United States Patent No.

53 Akamai IV, 134 S. Ct. at 2119; Daniel Ilan & Jane Rosen, Supreme Court Curbs Patentability of Computerized Business Methods, 26 NO.9 INTELL.PROP.&

TECH.L.J. 8, 11 (2014).

54 Lorenzen, supra note 30, at 206.

55 Akamai IV, 134 S. Ct. at 2120.

56 Akamai VI, 797 F.3d at 1020

57 Id. at 1023; Olajumoke Obayanju, What Next? Exploring the Federal Circuit’s Expansion of Direct Infringement Liability Post-Akamai v. Limelight and the Process it Took to Get There, 25 FED.CIR.B.J. 319, 320, 332 (2016).

58 Akamai VI, 797 F.3d at 1023; Obayanju, supra note 57, at 334.

59 Akamai VI, 797 F.3d at 1022–23; Obayanju, supra note 57, at 332–33.

60 Akamai VI, 797 F.3d at 1022–23; Obayanju, supra note 57, at 332–33.

61 Akamai I, 614 F. Supp. 2d 90 (D. Mass. 2009), aff’d, 629 F.3d 1311, 1314 (Fed. Cir. 2010), vacated, 419 F. App’x 989, 989 (Fed. Cir. 2011), aff’d, 786 F.3d

6,108,703 (the 703 Patent), related to delivering a web page by using a method “for replicating page objects among a distributed set of content delivery service provider servers and redirecting end user requests for those objects to a particular content server.”⁶² The disputed claim comprised several steps.⁶³ Specifically, the claim included a step of retrieving the objects of a web page from a domain, other than the domain of the web page service provider.⁶⁴ Both the defendant (Limelight Networks, Inc.) and Akamai Technologies, Inc. were web page service providers and served content providers.⁶⁵ Both parties’ CDN services offered different servers in different locations for content providers to choose to store objects.⁶⁶ Content providers used the defendant’s service to transmit web pages to readers, but they could control the delivery server of the objects without the defendant’s interference.⁶⁷ Therefore, one step of the patented method which requires “tagging at least some of the embedded objects of the page. . . .” was not performed by the defendant because it was performed by the defendant’s clients.⁶⁸

The defendant provided instruction to its clients, and the instruction taught the clients how to edit their web page files in order to utilize the defendant’s CDN technology.⁶⁹ Although the contracts between the defendant and its clients provided that the

899, 915 (Fed. Cir. 2015), rev’d, 797 F.3d at 1022, aff’d in part, rev’d in part, 805 F.3d 1368, 1372 (Fed. Cir. 2015), cert. denied, 136 S. Ct. 1661, 1661 (2016).

62 Akamai I, 614 F. Supp. 2d at 97 & n.3.

63 Claim 34 of the 703 Patent comprises “[1] distributing a set of page objects across a network of content servers managed by a domain other than a content provider domain, wherein the network of content servers are organized into a set of regions; [2] for a given page normally served from the content provider domain, tagging at least some of the embedded objects of the page so that requests for the objects resolve to the domain instead of the content provider domain; in response to a client request for an embedded object of the page: [3] resolving the client request as a function of a location of the client machine making the request and current Internet traffic conditions to identify a given region; and [4] returning to the client an IP address of a given one of the content servers within the given region that is likely to host the embedded object and that is not overloaded.”

Akamai II, 629 F.3d at 1314, 1316–17 (alteration in original) (emphasis added) (emphasis omitted from original), vacated, 419 F. App’x at 989, aff’d, 786 F.3d at 915, rev’d, 797 F.3d at 1022, aff’d in part, rev’d in part, 805 F.3d at 1372, cert.

denied, 136 S. Ct. at 1661.

64 Akamai II, 629 F.3d at 1316–17.

65 Akamai I, 614 F. Supp. 2d at 96.

66 Id.

67 Id. at 116–17.

68 Id. at 116–17, 117 n.24.

69 Id. at 116–17.

clients would implement the defendant’s service, which the defendant would exchange for payment, the district court held that the contractual relationship was merely an “arms-length contract negotiation” because the payment clause was only a form of financial remuneration.⁷⁰ Therefore, no evidence proved the requisite “control” or “direction” needed to have been exercised by the defendant over its customers for liability to result.⁷¹ The defendant was not liable for direct infringement.⁷²