Drake IP 2013: Keith Robinson, “The aftermath of Akamai”

Liveblogged from Drake IP Roundtable 2013.

Considers joint infringement of a method claim. There was a patent covering something like the iTunes system, with four steps performed by at least three companies. Because no entity performed all of the steps, the patent is not easily enforceable. Defendants may say: “We may perform steps A,B,C, but we don’t perform step D – therefore we don’t infringe.”

Argues that to reduce the cost of enforcement of multiparty claims, the law should clearly explain what sort of behaviour infringes multiparty claims, and provide a remedy for multiparty infringement. So, in Akamai v Limelight, a patent had five steps; the Limelight system performed all the steps, but Limelight pushed one of the steps to the customers, therefore did not infringe.

On appeal, not all the questions were addressed; in particular, there was no answer to whether patent could be indirectly infringed.

Liability of induced infringement is now premised on a showing that:

  1. the alleged inducer knew of the patent;

  2. (a) it induced the performance; and (b) it performed some or all and induced another party to perform the others; and

  3. those steps were performed such that an actual infringement occurred.

The problem with this approach is that it means that patents are not easily enforceable. The Newman dissent in that case is interesting: essentially, provides that if the claimed steps are performed, the claim is infringed and there should be liability. It is not clear how to apportion liability, but tort law principles might help.

In six years after Akamai, the Federal Circuit have given us the spectrum of multiparty activities, some of which the court thinks should be discouraged, others not. Robinson worries that allowing infringement through concerted action decreases incentives and elides fair rewards. Robinson notes that without the possibility of enforcement, there are now many multiparty method patents that are essentially open source methods that are free to the public. Robinson worries that protecting methods with trade secret with become increasingly important in the absence of patent protection.