Emory University School of Law Professor and Associate Faculty Dean Timothy Holbrook has authored an essay titled “The Potential Extraterritorial Consequences of Akamai,” to consider the Federal Circuit Court of Appeals ruling allowing someone who induces others to infringe a patent to be held liable to the patent holder and abrogating a previous rule requiring a unitary infringer in order for a party to be liable for induced infringement under 35 U.S.C. § 271(b). Details about the court’s split ruling appear in Issue 42 of this Bulletin.
According to Holbrook, the Federal Circuit “decoupled active infringement from § 271(a), meaning that infringement under § 271(b) is free-standing, and infringement is not defined by reference to other provisions of § 271. The decoupling also means that, as a statutory matter, the court has removed the territorial constraints from active inducement.” His essay elaborates on that extraterritorial expansion and asks, among other matters, whether a U.S. patent is infringed where “a party outside of the United States actively induces someone to perform the steps of the method outside of the United States.” He contends that “this cannot be the case,” given that patents are creatures of national law and generally have no extraterritorial effect. Still, less extreme hypotheticals could, in Holbrook’s view expand the law’s extraterritorial reach under Akamai.