CURRENT STATUS OF DIVIDED INFRINGEMENT AND INDUCEMENT Presented By: Joseph A. Calvaruso Orrick, Herrington & Sutcliffe LLP © AIPLA 2015

Indirect Infringement Does Not Remedy The Problem Contributory Infringement – 35 USC§271(c) Induced Infringement – 35 USC§271(b) No Indirect Infringement Without Finding That Someone Was Liable For Finding Of Direct Infringement © AIPLA 2015

BMC Resources, Inc. v. Paymentech, L. P. , 498 F. 3d 1373 (Fed. Cir Federal Circuit Affirmed District Court Summary Judgment Of No Infringement Direct infringement requires a showing that a defendant has practiced each and every element of the claimed invention. Courts faced with a divided infringement theory have generally refused to find liability where one party did not control or direct each step of the patented process. © AIPLA 2015

Akamai Techs., Inc. v. Limelight Networks, Inc. A content delivery service, comprising: replicating a set of page objects across a wide area network of content servers managed by a domain other than a content provider domain; for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain; responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and serving at least one embedded object of the given page from a given content server in the domain instead of from the content provider domain. © AIPLA 2015

Original Akamai Federal Circuit Panel Affirmed No Infringement No infringement by Limelight because its customers were not tagging the objects on behalf of Limelight. © AIPLA 2015 5

Akamai First Federal Circuit En Banc Decision “[A]ll the steps of a claimed method must be performed to find induced infringement but it is not necessary to prove that all steps were performed by a single entity.” © AIPLA 2015 6

Akamai Second Federal Circuit En Banc Decision Limelight directs or controls its customers performance of the remaining claim steps by: conditioning its customers’ use of its content delivery network upon its customers’ performance of the tagging step. establishing the manner or timing of its customers performance. © AIPLA 2015 7

Akamai November 16, 2015 Federal Circuit Panel Decision “[A] claim term is only given a special definition different from the term’s plain and ordinary meaning if the ‘patentee. . . clearly set[s] forth a definition of the disputed claim term other than its plain and ordinary meaning.” “[E]ven where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction.” © AIPLA 2015 8

Akamai November 16, 2015 Federal Circuit Panel Decision To collect lost profits a patentee must show a reasonable probability that “but for” the infringing activity, the patentee would have made the infringer’s sales. This is done by determining what profits the patentee would have made absent the infringing product. © AIPLA 2015 9

Minimizing Divided/Joint Infringement Issues Draft method claims such that the recited steps in each claim can be satisfied by a single actor. Focus on one entity – end user or a service provider - and whether it supplies or receives elements of the invention. Draft claims that capture the behavior of potential infringers in the U.S. - Performance of any method step outside the United States will likely avoid direct infringement. © AIPLA 2015 10

Minimizing Divided/Joint Infringement Issues In entering into contracts with customers: Enable customers to user your service even if they do not perform missing claim step. Avoid providing customers with detailed instructions on how to perform missing claim step. © AIPLA 2015 11

Thank You. Joseph A. Calvaruso Thank You Joseph A. Calvaruso Orrick, Herrington & Sutcliffe LLP 51 West 52nd Street, New York, NY 10019 jcalvaruso@orrick.com 1-212-506-5140 www.orrick.com/ip © AIPLA 2015