February 19, 2019

February 18, 2019

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Federal Circuit Resurrects ‘Induced Infringement;’ Narrows ‘Joint Infringement Defense’

Last Friday, in the cases Akamai Tech. v. Limelight Networks and Mckesson Tech. v. Epic Systems, the Federal Circuit sitting en banc ruled that a single party no longer needs to practice all steps of a patented method claim in order to allow for a finding of infringement. The court split 6-5 in overturning its previous rule that in order to succeed on a claim for induced infringement of a method claim, a plaintiff had to show that the induced entity practiced every step of the claim. That rule, commonly known as the Joint Infringement Defense, no longer applies in the context of induced patent infringement. As the per curiam opinion put it: “To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.”

The Federal Circuit was careful to explain that its holding only applies in the context of a “knowing” inducer and expressly declined to apply its decision to the “strict liability” direct infringement context. Nonetheless, the decision will likely have a sweeping impact because patent holders that previously would have focused on direct infringement will now likely attempt to repackage their cases to focus on inducement. In this manner, the holding provides patent plaintiffs a potential path around the Joint Infringement Defense, which had been a thorn in the side of patent plaintiffs since it was established by the Federal Circuit.

Despite the fact that liability for inducement still requires a showing of knowledge that the induced acts constitute patent infringement, this decision is a significant change to the patent landscape. It increases the value of obtaining method claims covering the operation of multi-actor systems, including software systems implemented over the Internet. It may also embolden potential plaintiffs, including Non-Practicing Entities, who may begin asserting these types of method claims even more frequently and aggressively than before.

Given these potential ramifications and the close split in the Federal Circuit, this decision will undoubtedly be appealed to the Supreme Court, and this area of law will remain in a closely watched state of flux for the foreseeable future.

© 2019 Neal, Gerber & Eisenberg LLP.


About this Author

Gregory J. Leighton, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm

Gregory J. Leighton is a member of Neal Gerber Eisenberg’s Intellectual Property & Technology Transactions practice group and is also a registered patent attorney. Greg’s practice involves both patent prosecution and the protection and enforcement of various forms of intellectual property. One key focus of Greg’s practice is controversies regarding intellectual property rights in the chemical and life sciences areas. Some of his recent representative matters in this space include successfully representing clients in patent disputes before federal courts and the United States...

Kevin C. May, Intellectual Property & Technology Transactions attorney, Neal Gerber law firm

Kevin C. May is a trial lawyer who focuses his practice on intellectual property and complex commercial litigation.

Before joining Neal Gerber Eisenberg, Kevin spent 15 years litigating complex cases at one of the world’s largest firms. Kevin now leverages the experience and skills he gained during that time to offer the same highly sophisticated level of representation from a far more cost-effective and client-friendly platform.

Kevin has extensive experience litigating cases involving intellectual property rights, including patents, copyrights, trademarks and trade secrets. He has successfully represented clients of all sizes, from Fortune 100 companies to Internet start-ups, in a wide variety of industries. His intellectual property clients have included such companies as Navistar, Owens-Illinois, Integra Life Sciences, Cooper Industries and CareerBuilder, and his cases have involved a myriad of technologies, from the relatively simple to the highly complex.