In the en banc rehearing of Akamai Techs., Inc. v. Limelight Networks, Inc. and McKesson Techs., Inc. v. Epic Systems Corp.,1 the Federal Circuit, in a 6-5 decision, has expanded the doctrine of induced infringement. Previously, it was black letter law that induced infringement required a finding of direct infringement conducted by a single entity. Under Akamai, infringement of a method claim can now be found through steps performed by multiple actors at the inducement of a single defendant. The majority held that “there is no reason to immunize the inducer from liability for indirect infringement simply because the parties have structured their conduct so that no single defendant has committed all the acts necessary to give rise to liability for direct infringement.”2 Thus, for induced infringement, “it is [no longer] necessary to prove that all the steps were committed by a single entity.”3

The statute that controls induced infringement, 35 U.S.C. § 271(b), states that “whoever actively induces infringement of a patent shall be liable as an infringer.” Before Akamai, the Federal Circuit had repeatedly held that inducement requires both (1) the act of knowingly inducing infringement (with knowledge of the patent) and (2) actual direct infringement of the patent as defined by 35 U.S.C. § 271(a).4

Specifically under Akamai, inducement liability now exists where (1) the accused infringer knew of t he patent; (2) it induced performance of the steps of the method; and (3) those steps were actually performed (by one or more induced actors).5 In arriving at this new rule, the Court expressly overruled its 2007 BMC Resources decision,6 which required a predicate showing of direct infringement by a single entity before considering the question of induced infringement.7

This new test set forth in Akamai addresses the sets of facts present in the two cases that were considered on rehearing: (1) where “the defendant has performed some of the steps of a claimed method and has induced other parties to commit the remaining steps (as in the Akamai case )”; and (2) where “the defendant has induced other parties to collectively perform all the steps of the claimed method, but no single party has performed all of the steps itself (as in the McKesson case).”8 In Akamai, the asserted patent claimed methods for delivering web content by placing content on a number of "replication servers" and having web browsers access the content by being directed to those server pages. Accordingly, there was no direct modification of content providers' web pages and the defendant merely instructed users how to do so.9 Under the McKesson facts, the patent claims were directed toward electronic communication between patients and healthcare providers, whereby portions of defendant's software permitted patients to access their healthcare records directly from physicians. Defendant's software did not perform any of the steps of the method; rather, performance of the steps of the patented method was divided between the patients and healthcare providers.10 Under the new test, the Court reversed the district courts’ findings of non-infringement in both cases and remanded each for reconsideration.11

Although the Akamai decision dispensed with the requirement that a single actor perform all of the induced steps, the inducer still must have specific intent to cause the infringement. That is, the inducer must have knowledge that the steps it is encouraging are covered by the patent.12 The required intent is limited to the inducer itself, but acts by an “innocent intermediary who was induced” by the defendant can still incur liability on the defendant.13

The majority opinion relies on the intent requirement to justify the extension of induced infringement liability. In the majority's view, a party who induces several other parties to infringe collectively "has had precisely the same impact on the patentee as a party who induces the same infringement by a single direct infringer" and there is no reason to differentiate between the two types of inducing infringers.14 Nor is there any reason, according to the majority, to treat someone differently who only performs certain steps of a claimed method, and has one or more other parties complete infringement by performing other steps.15

The Court is careful to limit the scope of liability for induced infringement to the accused infringer. The Court did not, however, provide guidance on complicated issues associated with the measure of damages or availability of remedies taking into account the divided infringement.16