It is well-recognized that divided direct infringement can occur under 35 U.S.C. § 271(a) where all steps of a claimed method are attributable to a single entity, even when the steps are performed by multiple actors.1 However, until recently, the circumstances under which the steps performed by a third-party could be attributed to a single entity were less established. On August 13, 2015, on remand from a 2014 Supreme Court decision regarding induced infringement, the en banc Federal Circuit revisited the § 271(a) question2 in Akamai III and unanimously expanded the factual circumstances under which a “third party’s actions are attributed to the alleged infringer such that the alleged infringer becomes the single actor chargeable with direct infringement” under 35 U.S.C. § 271(a).3

The long procedural history of the Akamai Technologies, Inc. v. Limelight Networks, Inc. case began in 2006, and since then the case has traveled all the way to the Supreme Court and back down to the Federal Circuit—changing the law of divided infringement under both § 271(a) and § 271(b) along the way. Most recently in Akamai III, the en banc Federal Circuit addressed the issue of attribution in the context of divided direct infringement under § 271(a), holding that “an entity [is]responsible for others’ performance of method steps in two sets of circumstances: (1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.”4 In so holding, the en banc Court vacated the panel decision that limited divided infringement under § 271(a) to “principal-agent relationships, contractual arrangements, and joint enterprise” and expanded liability under § 271(a) to include circumstances “when an alleged infringer conditions participation in an activity or receipt of a benefit upon performance of a step or steps of a patented method and establishes the manner or timing of that performance.”5 In such circumstances, the alleged infringer is deemed to direct or control others’ performance.

In Akamai Technologies, Inc. v. Limelight Networks, Inc., Limelight was accused of infringing methods for delivering content over the Internet which included tagging and serving steps.6 Limelight’s customers maintained their own webpages and selected content to be uploaded to Limelight’s content delivery network for delivery to users of their webpages.7 In doing so, Limelight’s customers performed the claimed tagging and serving steps.8 The Federal Circuit in Akamai III held that substantial evidence was presented at trial from which that jury could have found that the customers’ performance of these steps was attributable to Limelight.9 Specifically, “Limelight condition[ed] customers’ use of its content delivery network upon its customers’ performance of the tagging and serving method steps” by requiring its customers’ to sign a standard contract which provided that “if Limelight’s customers wish to use Limelight’s product, they must tag and serve content.”10 Additionally, “Limelight establishe[d] the manner and timing of its customers’ performance,” for example, by providing a “welcome letter” that told Limelight’s customers how to perform an “integration process that include[d] the tagging step” in order to make Limelight’s service available.11

In its opinion, the Federal Circuit emphasized that whether a single actor directed or controlled the acts of one or more third parties and whether actors entered into a joint enterprise are “question[s] of fact, reviewable on appeal for substantial evidence, when tried to a jury.”12 The court ostensibly left open the possibility of further expansion of liability under § 271(a), stating that “principles of attribution are to be considered in the context of the particular facts presented,” and that “[i]n the future, other factual scenarios may arise which warrant attributing others’ performance of method steps to a single actor.”13

At least one district court has already found liability under § 271(a) under a different factual scenario. In Eli Lilly & Co. v. Teva Parental Medicines, Inc., Plaintiff Eli Lilly accused the defendants’ ANDA products of infringing its patented method of administration that required physicians to co-administer the patented drug with folic acid.14 On August 25, 2015, the U.S. District Court for the Southern District of Indiana concluded that “the factual circumstances were sufficiently analogous to those in Akamai to support a finding of direct infringement by physicians under § 271(a).”15 In particular, the benefit of the patented treatment was conditioned on the patient’s participation in the claimed co-administering steps—if the patient failed to carry out the step of administering folic acid as prescribed by the physician and the patient information, then the patient would not receive the benefit of the patented method.16 Additionally, “[t]he physician, based upon the patented method, direct[ed] the manner and timing of the patient's ingestion of folic acid . . . and the patient [wa]s required to do so to receive the full benefit of the treatment.”17

After Akamai Technologies, Inc. v. Limelight Networks, Inc., potential accused infringers seeking to avoid liability under § 271(a) should be cautious when entering into relationships with other parties and where possible should avoid actions that could be perceived as conditioning the use of their products or services upon another party’s performance of certain steps of a patented method. Designing those products or services to incorporate alternative modes of use in which another party may independently choose whether to perform the claimed steps may help negate any implied conditions to that effect. This is especially true for the sellers of products and services that, by their nature, may involve the performance of certain steps by their customers or other parties. Future patentees may also want to change their approach since, as with any factual issue, the outcome of a divided infringement claim can be uncertain. It may be in future patentees’ best interest to heed the Federal Circuit’s advice18 and avoid the issue of divided infringement all together by drafting method claims performable by only a single entity.