It seems that patent law decisions by the Supremes are the flavour for the month of June. Our Supremes issued the decision in the Enercon matter and Aparajitha had posted about it here. The US Supreme Court also issued two patent law decisions this week covering distributed infringement (Limelight Networks v. Akamai Technologies) and on indefiniteness analysis – i.e. level of support in specification for the claims (Nautilus v. BioSig). I shall be covering the Limelight decision in this post and the Nautilus decision separately.
Facts: Akamai Technologies, Inc., is the exclusive licensee of a patent that claims a method of delivering electronic data using a content delivery network (CDN). Limelight Networks, Inc., also operates a CDN and carries out several of the steps claimed in the patent, but its customers, rather than Limelight itself, perform a step of the patent known as “tagging.” Under US patent law, liability for direct infringement of a method claim may be attributed to one party if the party performs “all steps” of the method patent. The District Court held that Limelight did not directly infringe all the steps listed in the claim were not performed by it. The Federal Circuit reversed, holding that a defendant who performed some of the steps of a method patent and encouraged others to perform the remaining could be held to be liable for inducing infringement even if there was no party that was liable for direct infringement.
The US Supreme Court in a 9-0 reversal sided with the District Court and held that a defendant is not liable for inducing infringement when no one has directly infringed. The Supreme Court disregarded the Respondent’s contention that tort law and criminal law principles (aiding and abetting) doctrine, and patent law principles support the Federal Circuit’s reading and noted that: “Though a would be infringer could evade liability by dividing performance of a method patent’s steps with another whose conduct cannot be attributed to the defendant, this is merely a result of Federal Circuit’s interpretation of Section 271(a), and a desire to avoid this consequence does not justify fundamentally altering the rules of liability clearly required by the Patent Act’s text and structure.
Analysis: Although this case could be used to support the argument of good drafting of patent claims where a single actor performs all the steps, I think that this case stands for a much broader proposition: Whether criminal laws and related principles should guide infringement claims involving intellectual property (“IP”) or whether intellectual property principles should be applied in resolving IP infringement issues. The US Supreme Court holds that it cannot invoke criminal law principles in such kind of matters!
Most of us may have surfed the web looking for a song, a movie, a game, an article etc. and in our search we may have used a search engine, or a pointer to content site. However, does our action in reaching the illicit content make the search engine or the pointer site liable?
The US Supreme Court correctly dismissed the relation to criminal laws which focus on the mens rea rather than on the actus reus as criminal law is guided under the principle of retribution to society, and hence aiding and abetting are punishable offenses. (Discussing aiding and abetting statute must be read against the common-law background, and at common law two or more defendants, each of whom committed an element of a crime, were liable as principals.)
Instead, the US Supreme Court recognized that: “While we have drawn on criminal law concepts in the past in interpreting Section 271(b),…., we think it unlikely that Congress had this particular doctrine in mind when it enacted the Patents Act of 1952, given the doctrine’s inconsistency with the Act’s cornerstone principle that a patentees have a right only to the set elements claimed in their patents and nothing further.”
Indian position: In India on the same subject matter, Section 48 of the Patents Act provides that “Subject to the other provisions contained in this Act and the conditions specified in section 47, a patent granted under this Act shall confer upon the patentee—(a) where the subject matter of the patent is a product, the exclusive right to prevent third parties, who do not have his consent, from the act of making, using, offering for sale, selling or importing for those purposes that product in India; (b) where the subject matter of the patent is a process, the exclusive right to prevent third parties, who do not have his consent, from the act of using that process, and from the act of using, offering for sale, selling or importing for those purposes the product obtained directly by that process in India:
Further, section 104A provides for Burden of proof in case of suits concerning infringement that a patentee has a burden of first showing that the product obtained by the infringer is identical to that of the patented process. Once this showing is made, then it is upon the defendant to show the defendant’s process is different from the patented process. However, there is no specific provision for taking care of induced infringement under Indian law.
The problem of induced infringement, is not directly addressed in the Indian patent act and lack of addressal thereof under Indian patent laws may be an issue of concern. See my previous post on the issue here. As a matter of drafting, in the field wireless communications, I am hard pressed to think of a situation other than where all elements in a claim are performed at a single end — usually there is some transmission (to a network operator), and some reception (from a network operator). Hence distributed infringement issues could be problematic both for the patentee as well as a defendant in Indian courts given the lack of black letter law addressing the same. Inducement under tort law seems to be the only way to address the issue of contributory infringement.
Thanks Rajiv for the post. As an add on, we are nowadays drafting specifications in which, in method claims, in each step, we specify the actor or group of actors that may be responsible for that particular step, making the infringement more easy to identify and relate to. For instance, we write:
1. A method comprising
conducting, by a network controller, …
transmitting, by an access point,
Am not personally aware of any particular precedent that has led to this practice, but do see a number of US firms asking us to draft the claims like the above to make the infringement relatively easy to evidence.
Mr Chowdhary posts highlighting the applicability of territorial criminal and civil issues to the distributed or induced infringement issues are only a part to what the judgments convey to us. The more important issue is what the US stresses on that the rights of the patentee is only on the elements constituting the patent and no more. Hence it will be difficult to built a successful specification in which there are claims which incorporate a series of steps which allow intervention beyond the author of the specifications itself. The steps which are done by the second party whether intentional or otherwise are only a part of the flow of the claims for which the patent is granted. The specifications are to be seen as an homogenous flow of steps and not as a heterogeneous sequencing and hence the realm of the applicable patent laws. This is what the US is to be inferred from the judgment.