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Justin E. Gray

IP Litigation Attorney at Foley & Lardner LLP

Former Adjunct Professor at Northwestern University School of Law

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Will Federal Circuit Respond to Supreme Court's Discussion of Federal Circuit's Inducement Reasoning?

Limelight Networks, Inc. v. Akamai Technologies, Inc. (U.S. Supreme Court June 2, 2014)

The Supreme Court's decision in this case contains the following passage, which has been described by others as a "comedic error" and "poorly written", but at the very least can be described as curious:

The Federal Circuit's contrary view would deprvie §271(b) of ascertainable standards.  If a defendant can be held liable under §271(b) for inducing conduct that does not constitute infringement, then how can a court assess when a patent holder's rights have been invaded?  What if a defendant pays another to perform just one step of a 12-step process, and no one performs the other steps, but that one step can be viewed as the most important step in the process?  In that case, the defendant has not encouraged infringement, but no principled reason prevents him from being held liable for inducement under the Federal Circuit's reasoning, which permits inducement liability when fewer than all of a method's steps have been performed within the meaning of the patent.

This language is particularly troublesome given the following language from the Federal Circuit's prior en banc opinion in the case:

To be clear, we hold that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity.

Though the Supreme Court's Limelight decision has been cited in over a dozen district court decisions thus far, the above language has not yet been discussed in any court opinion.  This language also was not mentioned in the oral argument before the Federal Circuit on remand of this case.  It will nonetheless be interesting to see how the Federal Circuit decides to deal with this language, if at all, in its forthcoming opinion in this case.