In the Akamai case, CAFC made a historical decision on August 31, 2012, in that a joint infringement via Internet was decided to constitute the induced infringe of 35 U.S.C. §271(b). Such a decision revokes past decisions made by CAFC itself, and mentions that it may be possible to apply claims including multiple steps and a network to the cases conducted by two or more parties via the network. Hereinafter, we would like to introduce a Japanese case, “INTERNET Number case” (H20 (Ne) No. 10085, decided on March 24, 2009) which is similar to the Akamai case.
INTERNET Number Corporation (hereinafter, INTERNET Number) is a patentee of Japanese Patent No. 3762882 (hereinafter, ’882 patent). INTERNET Number asserted that a service “JAdress” provided by Netpia Inc. (hereinafter, Netpia) infringes Claim 1 of ’882 patent and filed the case with Tokyo District Court (H19 (Wa) No. 2352, decided on October 17, 2008). However, Tokyo District Court has not accepted such an assertion, and thus, INTERNET Number has appealed to Intellectual Property High Court (hereinafter, IPHC) of Japan. IPHC decided that Netpia infringes ’882 patent.
- Claim 1 of ’882 Patent
Claim 1 of ’882 patent is shown below.
- A method of providing access to information pages in a server system through a network from a client comprising:
providing a descriptor at the client;
mapping the descriptor to an URL by a directory server using a translation database residing in the directory server;
returning the URL in a REDIRECT command to the client by the directory server;
inducing the client to request the information using the URL; and
displaying a page identified by the URL at the client.
Claim 1 shown above relates to a technique of converting an address when an end user accesses various homepages via Internet. With such a technique, when the user inputs an address in a non-English language, Japanese for example, the directory server converts the Japanese address to an appropriate URL by using the translation database, and the directory server returns the URL to a personal computer of the user to display the homepage.
Compared to INTERNET Number case, in Akamai case, a customer is a content provider, and thus, the end user is not involved in Akamai case. However, these two cases are similar to each other because the patents are infringed by cooperative multiple parties via the networks.
- Main issues of INTERNET Number case
Main issues of the case are as shown below.
- Whether or not the defendant is the principal of the direct infringement of ’882 patent?
- Whether or not the PC user is the principal of the direct infringement of ’882 patent?
The plaintiff asserted that the defendant is the principal of the infringement of ’882 patent. The defendant asserted that the PC user is the principal of the infringement, and the defendant is not the infringer.
It should be noted that the indirect infringement of Japanese Patent Law (Article 101) is different from that of the U.S. Japanese Patent Law does not include induced infringement (35 U.S.C. §271(b)). Therefore, IPHP never constitutes a decision in the same manner as the Akamai case by applying the induced infringement. Article 101 of Japanese Patent Law is merely similar to the contributory infringement of the U.S. (35 U.S.C. §271(c)).
- Decision by IPHC
First, regarding above (1), IPHC stated that a party who has provided access is the infringer because Claim 1 of ’882 patent claims that “[a] method of providing access to information pages in a server system through a network from a client comprising …” In other words, IPHC asserted that the defendant infringes ’882 patent.
Second, regarding above (2), IPHC stated as shown below.
“The present invention is not an invention of ‘access’, but an invention of ‘[a] method of providing access’, and thus, it may be possible to assert the infringement of the patent right of the present invention even if there is no substantial access by a client. Furthermore, while ‘[a] method of providing access’ of the present invention is provided, the client simply can access a desired page in a limited scheme of the access method provided as a method of the respondent, and it is not determined based on the client’s subjective operations whether or not each access by the client belongs to a technical scope of the present invention. Therefore, it is not appropriate to assert that the use of the present invention which is ‘[a] method of providing access’ is completed only when there is an operation by the client.”
In other words, IPHC determined that the defendant is the principal of the infringement because Claim 1 is “[a] method of providing access to information pages in a server system through a network from a client …”, and the PC user is not an infringer of ’882 patent.
- Comments and Analysis
In INTERNET Number case, IPHC did not admit the joint infringement by the defendant and the end user. IPHC admitted that only the defendant is the infringer. Such a decision by IPHC is based on an expression of the claim, that is, “[a] method of providing access to information pages …”
However, if the claim were “[a] method of accessing information pages …”, has IPHC decided that the defendant was responsible as the infringer? This is a sort of speculation, but IPHC might have determined that the defendant was responsible as the infringer. IPHC might have recognized that in INTERNET Number case, there was the substantial infringement of ’882 patent. It might be a minor problem whether Claim 1 recites “[a] method of providing access to information pages …” or “[a] method of accessing information pages …”, and there is the same impact on the patentee as the direct infringement by a single party because the substantial infringement was there. IPHC’s assertion of infringement based on “[a] method of providing access to information pages …” of Claim 1 seems little like a stretch. If Claim 1 of ’882 patent were “[a] method of accessing information pages …”, it might be possible to assert that the defendant has designed the whole system and provided the system with the users. In any case, it is speculated that IPHC has made the decision as described above because IPHC has recognized the substantial infringement of ’882 patent.
It should be noted that Japanese courts have never admitted the joint infringement such as Akamai case. However, it must be a remarkable point that IPHC has mentioned a possibility to apply the patents to the infringement cases conducted by multiple parties via Internet.