The ‘claims’ of a patent dictate the rights of the patent owner and define the property created by the patent.
Where the invention is something physical, such as a machine or a drug, it is relatively easy to show infringement – the patent owner must show that the infringer made, used, or sold the machine or drug that meets all of the elements of a claim. Alternatively, the infringer is liable if the patent owner can show that the infringer ‘induced;’ that is, caused, someone else to make, use or sell the machine or drug and that other person actually did make, use or sell the machine or drug. The requirement that someone must actually make, use or sell the invention as claimed works well for patents to machines and drugs.
An injustice occurs when the claim addresses a method that can be performed by more than one person. This situation is common for Internet inventions. Consider the following (highly hypothetical) claim. A method of distributing content over the Internet comprising:
(a) uploading a video by a content provider to a server;
(b) modifying a website to instruct browsers to access the server to download the video.
In this hypothetical claim, the actions of two different persons can perform the two steps – the content provider and the person who modifies the website. If two different persons perform the two tasks, then the patent owner cannot produce any one person who performed both steps. There is no one person who ‘directly’ infringed the patent claim. As a result, if a copyist can split a patented method into pieces and have someone else perform another piece, then the copyist is not an infringer and the patent is unenforceable.
This situation has been a thorn in the side of Internet inventors. The Court of Appeals of the Federal Circuit decided to do something about it in the case of Akamai Technologies v Limelight Networks. In that case, the Federal Circuit concluded that Limelight Networks performed some of the steps of the patent claim and induced someone else to perform the remaining steps. The Federal Circuit held that Limelight was liable for infringement even if no one person performed all of the steps of the patent claim.
The joy of Internet inventors was short lived. Limelight asked the Supreme Court to hear an appeal and the Supreme Court asked the Federal government for advice on whether the Court should take the case. On December 10, 2013 the Federal government filed its brief saying that the Court should hear the case and should overturn the result. It now is likely that the Supreme Court will hear the appeal. The Court likely will issue a decision in late 2014 or 2015.
— Robert Yarbrough, Esq.