By Eric R. Chad*
In a per curiam opinion, Akamai Techs., Inc. v. Limelight Networks, Inc., 692 F.3d 1301 (Fed. Cir. 2012) [enhanced version available to lexis.com subscribers], a narrow majority of the Court of Appeals for the Federal Circuit, sitting en banc, revisited the Federal Circuit's prior BMC Resources, Inc. v. Paymentech, L.P. [enhanced version available to lexis.com subscribers] and Muniauction, Inc. v. Thomson Corp. [enhanced version available to lexis.com subscribers] decisions. The BMC and Muniauction opinions addressed so-called "divided infringement" of method claims.
Under BMC, a patentee had no remedy for infringement under 35 U.S.C. § 271(a) in divided infringement situations unless one party, acting as a "mastermind," performed some required steps of a claimed method and exerted "direction or control" over another party that performed the remaining steps. In Muniauction, the court went even further, holding that the direction or control language of BMC required more than controlling access to an allegedly infringing system or the issuance of instructions for performing a claim step. Something more, such as a contractual obligation to follow instructions on performance of a claim step, was necessary. Applying the Federal Circuit's decisions in BMC and Muniauction, district courts in two cases, Akamai Technologies, Inc. v. Limelight Networks, Inc. [enhanced version available to lexis.com subscribers] and McKesson Technologies, Inc. v. Epic Systems Corp. [enhanced version available to lexis.com subscribers], determined, as a matter of law, that the defendants did not infringe the asserted method claims, because no single party either (1) performed all the required steps of the asserted claims; or (2) acted as a mastermind, performing some of the required claim steps on its own and directing another party to perform the remaining claim steps.
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*Eric R. Chad practices general intellectual property law with an emphasis on all forms of intellectual property litigation including cases involving patents, trademarks and trade dress, copyrights, trade secrets, misappropriation of rights of publicity, false advertising, and unfair competition.
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