The recent US Supreme Court decision in Limelight Networks v. Akamai Technologies relates to joint infringement. Usually, infringement of a method or process claim in a patent occurs when one entity practices all the steps in the method or process. However, in many systems, for example communication systems, the system includes a server that is owned by one entity, and client systems (Blackberry®s for example) that are owned by another entity. A method or process claim, if written in the most straightforward and logical manner, would be performed in part by the entity that owns the server and in another part by the entity that owns the client system. Infringement of that method or process claim would require joint infringement, where the two entities cooperate in performing the steps of the process. Under present law, direct infringement may not be possible since present law requires that one entity perform all steps in the method or process unless one party is under control or direction of the other party.
Akamai owns a patent having a claim for a method for delivering electronic data using a content delivery network (CDN). Limelight operates a CDN. When Akamai sued Limelight Networks for infringement, Limelight Networks claimed noninfringement since Limelight performs all the steps of the method claim except for one: the step of “tagging” is performed by the user. On appeal, the US Court of Appeals for the Federal Circuit, in a ruling including the entire court, found that, although direct infringement may not have been possible, Limelight could be liable as an inducer of infringement. As stated in the US Supreme Court decision in Limelight Networks v. Akamai Technologies, the entity that owns the server cannot be considered to be inducing infringement since inducing infringement requires that someone be infringing the entire claim.
Unless there is a different ruling on direct infringement, and that ruling stands the test of the US Supreme Court, patent drafters will have to write separate claims: one set of claims where the actions occur only at the server, and another set of claims were the actions occur only at the client. The structure of such claims is awkward, the number of claims is twice that needed, and the Examiner will attempt restriction.
Until the law changes, we will need to write method claims that are performed by only one party.