Better News for Method Patent Holders – the Single Entity Problem

You are an inventor with limited resources.

                You go through the patent process and are able to obtain a patent which has only one claim which is method claim 1.

                A large company performs all of the steps of method claim 1 of your patent, except one step which it instructs customers how to perform.

                Is the large company liable to you for infringing your patent?

                According to the majority opinion of a panel of the Federal Circuit in Akamai Techs., Inc. v. Limelight Networks, Inc., No. 2009-1372, (Fed. Cir., May 13, 2015), the answer appeared to be no.

                However, luckily that decision appears to have been reversed, by an en banc (entire) court decision of the Federal Circuit in August of 2015.

                The panel in the May, 2015 decision stated that there is no direct infringement of a method claim unless a “single entity” performs (or has attributed to it) each and every step of the claimed method.

                In Akamai Techs., Inc., Limelight performed all the steps of a method claim, but one, which it instructed its customers how to perform. In May of 2015, the panel of the Federal Circuit found no direct infringement of the method claim by Limelight.  

                The dissent in the smaller panel decision stated that the majority was creating a “gaping loophole in infringement liability”.

Following the smaller panel opinion, an en banc review was done by the entire Federal Circuit court.

                In a subsequent decision in the case, Akamai Techs., Inc. v. Limelight Networks, Inc. Nos. 2009-1372, 2009-1380, 2009-1416 & 2009-1417, Slip Op. (Aug. 13, 2015) the en banc (entire) Federal Circuit Court reversed the prior panel decision of May, 2015.  

                The en banc Federal Circuit court expanded the situations where acts of another can be attributed to a single entity for purposes of infringement, and found that Limelight was liable for direct infringement.

                Patent Laws are complicated, confusing, and subject to change at any time. For any patent application or patent matter generally, it is important to consult with a registered patent attorney, such as Walter J. Tencza Jr., patentnow.com® .

               

 

Patent & Trademark Attorney

  • Over 25yrs Experience
  • Clients all over the World
  • Work Directly with a Registered Patent Attorney

Testimonials

Free E-Book

What Every Inventor Needs to Know About Patents