(Still) Waiting for Akamai and McKesson ….

As the summer rolls along, IP practitioners still await the Federal Circuit’s decisions in the en banc rehearings of Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010) and McKesson Techs. Inc. v. Epic Sys. Corp., 98 U.S.P.Q.2d 1281 (Fed. Cir. 2011), which will address liability among multiple step performers accused of patent infringement.

In Akamai, Limelight, Akamai’s direct competitor in the field of web page content storage, performed most of the claimed steps of method claims for the patent-in-suit, but its customers completed at least one of the other steps in each claim. Akamai relied on a joint liability theory to allege that Limelight controls or directs the activities of its customers. The District Court rejected the jury’s finding of joint infringement and found non-infringement based on earlier Federal Circuit precedent. In affirming the lower court, the Federal Circuit held that what is essential to finding joint infringement is determining that the accused infringers have an agency relationship or a contractual obligation to jointly perform the steps of the method. The Court concluded that the evidence did not demonstrate that Limelight’s customers perform any of the steps of the claimed method as agents for Limelight or by contract, and so found noninfringement as a matter of law.

In McKesson, McKesson sued Epic for infringing patented methods of communication between a healthcare provider and its patients. Each party acknowledged that the “initiating communication” step of the asserted claims is performed by patients of Epic’s healthcare provider customers. Epic, a software development company, licenses the accused MyChart software to its healthcare provider customers, for use by the providers’ patients at each patient’s option. If a patient wishes to use the MyChart software, the patient completes the claimed “initiate[] a communication” step with the MyChart web page. In affirming the lower court’s finding of non-infringement, the Federal Circuit cited Akamai and continued a decisional trend that generally favors finding infringement of a patented method only when a single entity performs all steps of the patented method. Once again, the McKesson Court found that actions by third parties only count toward a finding of joint infringement if those parties are acting as agents of or under the control and direction of a single direct infringer.

The Akamai and McKesson rulings followed earlier decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), and later Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), where the Court similarly curtailed the ability of a patent holder to assert joint infringement.

The en banc decisions from the Akamai and McKesson rehearings are anticipated to issue shortly, and surely will shape the playing field for joint infringement claims moving forward.

Gibbons will report on these decisions as they issue, with commentary regarding the repercussions for practitioners and the industry.