It is well accepted that a method claim is directly infringed when one party either performs or directs the performance of all steps in the claim. In contrast, direct infringement does not extend to those situations in which multiple parties collectively – but independently – perform all steps.

When a party does not directly infringe a method claim, it may still be liable for indirect infringement if it actively induces infringement by others. Historically, indirect infringement required proof that at least one party directly infringes.

In a recent en banc Federal Circuit ruling – Akamai Technologies v. Limelight Networks, Inc. – the Federal Circuit took another look at the circumstance in which multiple, independent parties collectively practice a patented method without liability. For example, parties can arrange to share performance of all method steps between them. Without some direction or control by one party over the other(s), there is no direct infringement and (before Akamai) there is no indirect infringement.

Akamai narrows this avenue for avoiding liability and expands the scope for indirect infringement by eliminating the requirement of direct infringement by at least one party. Now, a party may be liable for indirect infringement if (i) it knows of the method patent, (ii) it induces the performance by others of method steps that it does not perform, and (iii) all of the method steps are actually performed. Exemplary situations include the indirect infringer performing some method steps itself and inducing others to perform the remainder of the steps, or the indirect infringer performing no method steps but inducing others to collectively perform all of the steps.

Akamai is practically important for patent holders and potential infringers alike.

For patent holders, Akamai opens up new licensing opportunities and enforcement possibilities. Patent holders should revisit their patent portfolios in light of Akamai and consider whether any pending or potential multi-party activity may give rise to previously unavailable infringement actions or licensing arrangements. Pending and new patent applications can present multi-actor method claims to enhance the chances for obtaining a patent and to broaden the range of targetable activity. Keep in mind, however, that indirect infringement requires proof of knowledge and intent on the part of the indirect infringer (i.e., in addition to proof that the method steps were actually performed by someone), which can limit the ability of a patent holder to recover damages for past infringing activity. While the best practice remains to secure claims that would be directly infringed, patent applicants should consider multi-actor indirect infringement claims. When the direct-infringement approach is difficult to implement because of commercial realities in a particular market, the expanded scope of indirect infringement provides a useful additional tool for patent protection.

For potential infringers, the Akamai decision represents a substantial change to U.S. patent law, and it can significantly expand the scope of infringement liability in certain technology areas. Businesses in these areas should re-examine their commercial activities and patent review procedures to identify the potential for new exposure to indirect infringement liability. Existing opinions relying on non-infringement as a clearance basis for a competitor’s method claims should be revisited. Specifically, a party that does not directly infringe a method claim due to non-performance of a particular step must further consider whether its action nonetheless induce others to complete the claimed method.

In separate petitions to the U.S. Supreme Court, both Limelight Networks, Inc. and Epic Systems Corp. (the defendant in another, similar case decided by the Federal Circuit in the Akamai opinion) recently asked that the en banc decision be overturned as conflicting with long-standing precedent that no defendant can be liable for indirect infringement in the absence of direct infringement.