On April 20, 2011, the Federal Circuit granted an en banc rehearing petition for Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010), to address the following question: If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?

In Akamai, the defendant did not perform some steps of the plaintiff’s patented method itself, instead instructing its customers to perform those steps if they wanted to take advantage of the defendant’s services. Drawing on past Federal Circuit opinions in BMC Resources and Muniauction, which stated that joint infringement could be found only when one party was under the “control or direction” of the other party, the court held that “as a matter of Federal Circuit law … there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the step.”

Judge Newman’s dissent in McKesson Technologies, Inc. v. Epic Systems Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011), a similar case involving patient/physician interactive Websites requiring the actions of both patients and physicians to perform all the steps in the patented method, attacked the decision in Akamai and related cases and pushed for an en banc hearing to resolve the conflicting precedents addressing joint infringement. She highlighted the conflicts by contrasting recent Federal Circuit cases applying the “single-entity rule” with older cases that analyzed such joint or contributory infringement under traditional tort theories (which required only participation, collaboration, or combined actions to find liability). Judge Newman also argued that the rule would withhold patent protection from technologically advanced methods that increasingly involve interaction between multiple entities.

Oral argument for the en banc rehearing is scheduled for November 18, 2011.