Akamai Technologies, Inc.v. Limelight Networks, Inc. and McKesson Technologies, Inc. v. Epic Systems Corp. (Fed Cir, en banc 2012).


Prior to the recent en banc decision on divided infringement of method claims, the court had adopted a “single-entity rule,” under which no liability for direct infringement would be found unless a single actor performed all steps of a method claim or multiple participants performed the steps as part of a contract or agency relationship that is directed or controlled by a single “mastermind.” As a result of the rule, induced infringement under 35 U.S.C. § 271(b) required a predicate act of direct infringement by a single entity, in this case, two or more parties operating under some type of a formal arrangement.

The court in Akamai, by a slim 6-5 majority, took divided infringement in a new direction. The court overruled the single-entity rule and held that cases of divided infringement can be treated as induced infringement under section 271(b). Under the new interpretation, it is sufficient to show that the inducing party knew of the claimed method and either induced others to perform the entire method or induced others to perform whatever steps the inducer itself did not perform. In that case, the inducing party alone will be liable for infringement, and it is not necessary to show that the third party or parties required to complete the infringing activity had any contractual or agency relationship with each other or with the inducing party.

The majority’s approach simplifies the patentee’s task in proving liability for divided infringement, and allows for actions against infringers that would not have been possible under the single-entity rule. In the eyes of four dissenting judges, however, those advantages do not justify abandoning the single-entity interpretation of 35 U.S.C. § 271(a). A second dissent from Judge Newman attempts to solve the “single-entity rule” in a more basic way. She would restore infringement under either § 271(a) or § 271(b) “to its status as occurring when all of the claimed steps are performed, whether by a single entity or more than one entity, whether by direction or control, or jointly, or in collaboration or interaction.”