Akamai Technologies, Inc. v. Limelight Networks, Inc.

United States Court of Appeals
for the Federal Circuit
__________________________

AKAMAI TECHNOLOGIES, INC.,
Plaintiff-Appellant,
AND

THE MASSACHUSETTS INSTITUTE OF
TECHNOLOGY,
Plaintiff-Appellant,

v.
LIMELIGHT NETWORKS, INC.,
Defendant-Cross Appellant.
__________________________

2009-1372, -1380, -1416, -1417
__________________________

Appeal from the United States District Court for the
District of Massachusetts in Nos. 06-CV-11109 and 06-
CV-11585, Judge Rya W. Zobel.
__________________________

AND

MCKESSON TECHNOLOGIES, INC. (formerly
McKesson Information Solutions, LLC),
Plaintiff-Appellant,

v.
AKAMAI TECH v. LIMELIGHT NETWORKS 2

EPIC SYSTEMS CORPORATION,
Defendant-Appellee.
__________________________

2010-1291
__________________________

Appeal from the United States District Court for the
Northern District of Georgia in No. 06-CV-2965, Judge
Jack T. Camp.
__________________________
Decided: August 31, 2012
___________________________

DONALD R. DUNNER, Finnegan, Henderson, Farabow,
Garrett & Dunner, LLP, of Washington, DC, argued for
plaintiffs-appellants on rehearing en banc in appeal nos.
2009-1372, -1380, -1416, and -1417 (“the Akamai ap-
peals”). With him on the brief for Akamai Technologies,
Inc. were KARA F. STOLL and ELIZABETH D. FERRILL. Of
counsel on the brief was JENNIFER S. SWAN, of Palo Alto,
California. On the brief for The Massachusetts Institute
of Technology was ROBERT S. FRANK, JR., Choate, Hall &
Stewart, LLP, of Boston, Massachusetts. Of counsel were
G. MARK EDGARTON and CARLOS PEREZ-ALBUERNE.

AARON M. PANNER, Kellogg, Huber, Hansen, Todd,
Evans & Figel, P.L.L.C. of Washington, DC, argued for
defendant-cross appellant on rehearing en banc in the
Akamai appeals. With him on the brief was MICHAEL E.
JOFFRE. Of counsel on the brief were DION MESSER,
Limelight Networks, Inc., of Tempe, Arizona. Also on the
brief were ALEXANDER F. MACKINNON, Kirkland & Ellis,
LLP, of Los Angeles, California and YOUNG J. PARK, of
New York, New York. On counsel was JOHN C.
3 AKAMAI TECH v. LIMELIGHT NETWORKS

ROZENDAAL, Kellogg, Huber, Hansen, Todd, Evans &
Figel, P.L.L.C., of Washington, DC.

RAYMOND P. NIRO, Niro, Haller & Niro, of Chicago, Il-
linois, for amici curiae Cascades Ventures, Inc. and VNS
Corporation on rehearing en banc in the Akamai appeals.
With him on the brief was JOHN C. JANKA.

MEREDITH MARTIN ADDY, Brinks Hofer Gilson & Li-
one, of Chicago, Illinois, for amici curiae Aristocrat Tech-
nologies Australia Pty Limited, et al. on rehearing en
banc in the Akamai appeals. Of counsel on the brief was
ANTHONY DE ALCUAZ, McDermott Will & Emery, LLP, of
Menlo Park, California.

ERIC L. ABBOTT, Shuffle Master, Inc., of Las Vegas,
Nevada, for amicus curiae Shuffle Master, Inc. on rehear-
ing en banc in the Akamai appeals.

JEFFREY W. FRANCIS, Pierce Atwood LLP, of Boston,
Massachusetts, for amicus curiae Boston Patent Law
Association on rehearing en banc in the Akamai appeals.

BENJAMIN G. JACKSON, Myriad Genetics, Inc., of Salt
Lake City, Utah, for amicus curiae Myriad Genetics, Inc.
on rehearing en banc in the Akamai appeals. With him
on the brief was JAY M. ZHANG.

WILLIAM G. BARBER, Pirkey Barber, LLP, of Austin,
Texas, for amicus curiae American Intellectual Property
Law Association on rehearing en banc in the Akamai
appeals.

JOHN W. RYAN, Sullivan & Worcester, of Washington,
DC, for amicus curiae Biotechnology Industry Organiza-
tion on rehearing en banc in the Akamai appeals. With
AKAMAI TECH v. LIMELIGHT NETWORKS 4

him on the brief was THOMAS M. HAAS. Of counsel on the
brief was HANS SAUER, PH.D., Biotechnology Industry
Organization, of Washington, DC.

ROBERT P. TAYLOR, Arnold & Porter, LLP, of San
Francisco, California, for amicus curiae Pharmaceutical
Research and Manufacturers of America on rehearing en
banc in the Akamai appeals. With him on the brief was
MONTY M. AGARWAL. Of counsel on the brief were DAVID
R. MARSH and LISA A. ADELSON, of Washington, DC and
DAVID E. KORN, Senior Assistant General Counsel, Phar-
maceutical Research and Manufacturers of America, of
Washington, DC.

STEVEN C. SEREBOFF, SoCal IP Law Group, LLP, of
Westlake, Village, California, for amicus curiae Conejo
Valley Bar Association on rehearing en banc in the
Akamai appeals. With him on the brief were MARK A.
GOLDSTEIN and M. KARLA SARVAIYA.

JULIE P. SAMUELS, Electronic Frontier Foundation, of
San Francisco, California, for amicus curiae Electronic
Frontier Foundation on rehearing en banc in the Akamai
appeals. Of counsel on the brief was MICHAEL BARCLAY.

MICHAEL K. KIRSCHNER, Hillis Clark Martin & Peter-
son, P.S., of Seattle, Washington, for amicus curiae Wash-
ington State Patent Law Association on rehearing en banc
in the Akamai appeals. With him on the brief was
ALEXANDER M. WU.

JERRY R. SELINGER, Patterson & Sheridan, LLP, of
Houston, Texas, for amicus curiae Altera Corporation, et
al. on rehearing en banc in the Akamai appeals. With
him on the brief were B. TODD PATTERSON; and GERO G.
MCCLELLAN, of Greensboro, North Carolina.
5 AKAMAI TECH v. LIMELIGHT NETWORKS

CHARLES A. WEISS, New York Intellectual Property
Law Association, of New York, New York, for amicus
curiae New York Intellectual Property Law Association on
rehearing en banc in the Akamai appeals. With him on
the brief was THERESA M. GILLIS.

CALVIN L. LITSEY, Faegre & Benson, LLP, of Minnea-
polis, Minnesota, for amicus curiae Thomson Reuters
Corporation on rehearing en banc in the Akamai appeals.
With him on the brief were AARON D. VAN OORT,
CHRISTOPHER J. BURRELL, and TIMOTHY M. SULLIVAN.

PETER J. BRANN, Brann & Isaacson, of Lewiston,
Maine, for amici curiae Internet Retailers on rehearing en
banc in the Akamai appeals. With him on the brief were
DAVID SWETNAM-BURLAND and STACY O. STITHAM.

GARRETH A. SAROSI, MetroPSC Wireless, Inc. of
Richardson, Texas, for amicus curiae MetroPCS Wireless,
Inc. on rehearing en banc in the Akamai appeals. With
him on the brief was MARK A. STACHIW. On the brief for
CTIA-The Wireless Association were GREGORY P. STONE,
ANDREW W. SONG and HEATHER E. TAKAHASHI, Munger,
Tolles & Olson, LLP, of Los Angeles, California.

TIMOTHY S. TETER, Cooley, LLP, of Palo Alto, Califor-
nia, for amicus curiae Apple Inc. on rehearing en banc in
the Akamai appeals. With him on the brief were LORI R.
MASON and BENJAMIN G. DAMSTEDT. Of counsel on the
brief were IAIN R. CUNNINGHAM and PATRICK J. MURPHY,
Apple, Inc., of Cupertino, California.

VICKI G. NORTON, Duane Morris LLP, of San Diego,
California, for amici curiae San Diego Intellectual Prop-
AKAMAI TECH v. LIMELIGHT NETWORKS 6

erty Law Association, et al. on rehearing en banc in the
Akamai appeals.

EDWARD R. REINES, Weil, Gotshal & Manges, LLP, of
Redwood Shores, California, for amici curiae Cisco Sys-
tems, Inc., et al. on rehearing en banc in the Akamai
appeals. With him on the brief was NATHAN GREENBLATT.

MATTHEW D. MCGILL, Gibson, Dunn & Crutcher LLP,
of Washington, DC, for amici curiae for Facebook, Inc., et
al. on rehearing en banc in the Akamai appeals. With
him on the brief was WILLIAM G. JENKS.

STEVEN GARDNER, Kilpatrick Townsend & Stockton
LLP, of Winston-Salem, North Carolina, for amicus curiae
The Financial Services Roundtable on rehearing en banc
in the Akamai appeals. With him on the brief was ALTON
L. ABSHER III. Of counsel on the brief was GIA L. CINCONE,
of San Francisco, California.

DARYL L. JOSEFFER, King & Spalding, LLP, of Wash-
ington, DC, argued for plaintiff-appellant on rehearing en
banc in appeal no. 2010-1291 (“the McKesson appeal”).
With him on the brief were TIMOTHY G. BARBER and ADAM
M. CONRAD, of Charlotte, North Carolina. Of counsel was
PAUL D. CLEMENT, King & Spalding, of Washington, DC.

STEVEN D. MOORE, of Kilpatrick Stockton LLP, of At-
lanta, Georgia, argued for defendant-appellee on rehear-
ing en banc in the McKesson appeal. With him on the
brief were WILLIAM H. BOICE, RUSSELL A. KORN, D. CLAY
HOLLOWAY and JASON D. GARDNER. Of counsel on the
brief was ADAM H. CHARNES, of Winston-Salem, North
Carolina.
7 AKAMAI TECH v. LIMELIGHT NETWORKS

MEREDITH MARTIN ADDY, Brinks Hofer Gilson & Li-
one, of Chicago, Illinois, for amici curiae Aristocrat Tech-
nologies Austrialia Pty Limited, et al. on rehearing en
banc in the McKesson appeal. With her on the brief was
ANTHONY DE ALCUAZ, McDermott Will & Emery LLP, of
Menlo Park, California.

JAY Z. ZHANG, Myriad Genetics, Inc., of Salt Lake
City, Utah, for amicus curiae Myriad Genetics, Inc. on
rehearing en banc in the McKesson appeal. With him on
the brief was BENJAMIN G. JACKSON.

HANS SAUER, PH.D., Biotechnology Industry Organiza-
tion, of Washington, DC, for amicus curiae Biotechnology
Industry Organization on rehearing en banc in the
McKesson appeal. Of counsel on the brief were JOHN W.
RYAN and THOMAS M. HAAS, Sullivan & Worcester, of
Washington, DC.

ROBERT P. TAYLOR, Arnold & Porter LLP, of San
Francisco, California, for amicus curiae Pharmaceutical
Research and Manufacturers of America on rehearing en
banc in the McKesson appeal. With him on the brief was
MONTY M. AGARWAL. Of counsel on the brief were DAVID
R. MARSH and LISA A. ADELSON, of Washington, DC; and
DAVID E. KORN, Senior Assistant General Counsel, Phar-
maceutical Research and Manufacturers of America, of
Washington, DC.

WILLIAM G. BARBER, Pirkey Barber LLP, of Austin,
Texas, for amicus curiae American Intellectual Property
Law Association on rehearing en banc in the McKesson
appeal.

JULIE SAMUELS, Electronic Frontier Foundation, of
San Francisco, California, for amicus curiae Electronic
AKAMAI TECH v. LIMELIGHT NETWORKS 8

Frontier Foundation on rehearing en banc in the McKes-
son appeal. With her on the brief was MICHAEL BARCLAY.

SANFORD E. WARREN, JR., Akin Gump Strauss Hauer
& Feld LLP, of Dallas, Texas, for amicus curiae Encore
Wire Corporation on rehearing en banc in the McKesson
appeal. With him on the brief was REX S. HEINKE, of Los
Angeles, California.

JERRY R. SELINGER, Patterson & Sheridan LLP, of
Houston, Texas, for amicus curiae Altera Corporation, et
al. on rehearing en banc in the McKesson appeal. With
him on the brief were B. TODD PATTERSON; and GERO G.
MCCLELLAN, of Greensboro, North Carolina.

GARRETH A. SAROSI, of MetroPCS Wireless, Inc. of
Richardson, Texas, for amicus curiae MetroPCS Wireless,
Inc. on rehearing en banc in the McKesson appeal. With
him on the brief was MARK A. STACHIW. On the brief for
CTIA-The Wireless Association were GREGORY P. STONE,
ANDREW W. SONG and HEATHER E. TAKAHASHI, Munger,
Tolles & Olson, LLP, of Los Angeles, California.

EDWARD R. REINES, Weil, Gotshal & Manges, LLP, of
Redwood Shores, California, for amici curiae Cisco Sys-
tems, Inc., et al. on rehearing en banc in the McKesson
appeal. With him on the brief was NATHAN GREENBLATT.

CHARLES A. WEISS, New York Intellectual Property
Law Association, of New York, New York, for amicus
curiae New York Intellectual Property Law Association,
on rehearing en banc in the McKesson appeal. With him
on the brief were JOHN M. HINTZ and THERESA M. GILLIS.
9 AKAMAI TECH v. LIMELIGHT NETWORKS

ERIC L. ABBOTT, Shuffle Master, Inc. of Las Vegas,
Nevada, for amicus curiae Shuffle Master, Inc. on rehear-
ing en banc in the McKesson appeal.
__________________________

Before RADER, Chief Judge, NEWMAN, LOURIE, BRYSON,
LINN, DYK, PROST, MOORE, O’MALLEY, REYNA, and
WALLACH, Circuit Judges.
Opinion of the court filed PER CURIAM.

Dissenting opinion filed by Circuit Judge NEWMAN.

Dissenting opinion filed by Circuit Judge LINN, in which
Circuit Judges DYK, PROST, and O’MALLEY join.

PER CURIAM.

When a single actor commits all the elements of in-
fringement, that actor is liable for direct infringement
under 35 U.S.C. § 271(a). When a single actor induces
another actor to commit all the elements of infringement,
the first actor is liable for induced infringement under 35
U.S.C. § 271(b). But when the acts necessary to give rise
to liability for direct infringement are shared between two
or more actors, doctrinal problems arise. In the two cases
before us, we address the question whether a defendant
may be held liable for induced infringement if the defen-
dant has performed some of the steps of a claimed method
and has induced other parties to commit the remaining
steps (as in the Akamai case), or if the defendant has
induced other parties to collectively perform all the steps
of the claimed method, but no single party has performed
all of the steps itself (as in the McKesson case).

The problem of divided infringement in induced in-
fringement cases typically arises only with respect to
AKAMAI TECH v. LIMELIGHT NETWORKS 10

method patents. When claims are directed to a product or
apparatus, direct infringement is always present, because
the entity that installs the final part and thereby com-
pletes the claimed invention is a direct infringer. But in
the case of method patents, parties that jointly practice a
patented invention can often arrange to share perform-
ance of the claimed steps between them. In fact, some-
times that is the natural way that a particular method
will be practiced, as the cases before us today illustrate.
Recent precedents of this court have interpreted section
271(b) to mean that unless the accused infringer directs
or controls the actions of the party or parties that are
performing the claimed steps, the patentee has no rem-
edy, even though the patentee’s rights are plainly being
violated by the actors’ joint conduct. We now conclude
that this interpretation of section 271(b) is wrong as a
matter of statutory construction, precedent, and sound
patent policy.

Much of the briefing in these cases has been directed
to the question whether direct infringement can be found
when no single entity performs all of the claimed steps of
the patent. It is not necessary for us to resolve that issue
today because we find that these cases and cases like
them can be resolved through an application of the doc-
trine of induced infringement. In doing so, we reconsider
and overrule the 2007 decision of this court in which we
held that in order for a party to be liable for induced
infringement, some other single entity must be liable for
direct infringement. BMC Resources, Inc. v. Paymentech,
L.P., 498 F.3d 1373 (Fed. Cir. 2007). 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.
11 AKAMAI TECH v. LIMELIGHT NETWORKS

I

The essential facts of the cases before us are as fol-
lows:

Akamai Technologies, Inc., owns a patent that covers
a method for efficient delivery of web content. The
claimed method consists of placing some of a content
provider’s content elements on a set of replicated servers
and modifying the content provider’s web page to instruct
web browsers to retrieve that content from those servers.
Akamai filed a complaint against Limelight Networks,
Inc., alleging infringement of the patent. In its complaint,
Akamai alleged both direct and induced infringement.
Limelight maintains a network of servers and, as in the
patented method, it allows for efficient content delivery by
placing some content elements on its servers. Limelight,
however, does not modify the content providers’ web
pages itself. Instead, Limelight instructs its customers on
the steps needed to do that modification.

McKesson Information Solutions LLC owns a patent
covering a method of electronic communication between
healthcare providers and their patients. McKesson filed a
complaint against Epic Systems Corp. alleging that Epic
induced infringement of the patent. Epic is a software
company that licenses its software to healthcare organiza-
tions. The licensed software includes an application
called “MyChart,” which permits healthcare providers to
communicate electronically with patients. McKesson
alleged that Epic induced Epic’s customers to infringe
McKesson’s patent. Epic does not perform any steps of
the patent. Instead, those steps are divided between
patients, who initiate communications, and healthcare
providers, who perform the remainder of the steps.
AKAMAI TECH v. LIMELIGHT NETWORKS 12

In the respective district court cases, Limelight and
Epic were held not to infringe the patents asserted
against them. In Akamai, because Limelight’s customers
(and not Limelight itself) performed one of the steps of
the claimed method, the district court granted Limelight’s
motion for judgment as a matter of law based on this
court’s opinions in BMC and Muniauction, Inc. v. Thom-
son Corp., 532 F.3d 1318 (Fed. Cir. 2008). In McKesson,
the district court relied on the same cases to grant sum-
mary judgment of noninfringement on the ground that
the patients (and not Epic’s direct customers) performed
the step of initiating the communication.

II

A

This court has held that for a party to be liable for di-
rect patent infringement under 35 U.S.C. § 271(a), that
party must commit all the acts necessary to infringe the
patent, either personally or vicariously. See Cross Med.
Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d
1293, 1311 (Fed. Cir. 2005); Fromson v. Advance Offset
Plate, Inc., 720 F.2d 1565, 1568 (Fed. Cir. 1983). In the
context of a method claim, that means the accused in-
fringer must perform all the steps of the claimed method,
either personally or through another acting under his
direction or control. Direct infringement has not been
extended to cases in which multiple independent parties
perform the steps of the method claim. Because direct
infringement is a strict liability tort, it has been thought
that extending liability in that manner would ensnare
actors who did not themselves commit all the acts neces-
sary to constitute infringement and who had no way of
knowing that others were acting in a way that rendered
their collective conduct infringing. See In re Seagate
13 AKAMAI TECH v. LIMELIGHT NETWORKS

Tech., LLC, 497 F.3d 1360, 1368 (Fed. Cir. 2007) (en banc)
(“Because patent infringement is a strict liability offense,
the nature of the offense is only relevant in determining
whether enhanced damages are warranted.”). For that
reason, this court has rejected claims of liability for direct
infringement of method claims in cases in which several
parties have collectively committed the acts necessary to
constitute direct infringement, but no single party has
committed all of the required acts. See BMC, 498 F.3d at
1381 (“Direct infringement is a strict-liability offense, but
it is limited to those who practice each and every element
of the claimed invention.”); see also Muniauction, 532 F.3d
at 1329 (same).

To be sure, the court has recognized that direct in-
fringement applies when the acts of infringement are
committed by an agent of the accused infringer or a party
acting pursuant to the accused infringer’s direction or
control. See BMC, 498 F.3d at 1380. Absent an agency
relationship between the actors or some equivalent,
however, a party that does not commit all the acts neces-
sary to constitute infringement has not been held liable
for direct infringement even if the parties have arranged
to “divide” their acts of infringing conduct for the specific
purpose of avoiding infringement liability. See Cross
Med. Prods., 424 F.3d at 1311 (no liability for direct
infringement if the party that is directly infringing is not
acting as an agent of, or at the direction of, the accused
infringer).

Because the reasoning of our decision today is not
predicated on the doctrine of direct infringement, we have
no occasion at this time to revisit any of those principles
regarding the law of divided infringement as it applies to
liability for direct infringement under 35 U.S.C. § 271(a).
AKAMAI TECH v. LIMELIGHT NETWORKS 14

B

The induced infringement provision of the Patent Act,
35 U.S.C. § 271(b), provides that “[w]hoever actively
induces infringement of a patent shall be liable as an
infringer.” Because section 271(b) extends liability to a
party who advises, encourages, or otherwise induces
others to engage in infringing conduct, it is well suited to
address the problem presented by the cases before us, i.e.,
whether liability should extend to a party who induces
the commission of infringing conduct when no single
“induced” entity commits all of the infringing acts or steps
but where the infringing conduct is split among more
than one other entity.

Induced infringement is in some ways narrower than
direct infringement and in some ways broader. Unlike
direct infringement, induced infringement is not a strict
liability tort; it requires that the accused inducer act with
knowledge that the induced acts constitute patent in-
fringement. See Global-Tech Appliances, Inc. v. SEB S.A.,
131 S. Ct. 2060, 2068 (2011). In fact, this court has
described the required intent as follows: “[I]nducement
requires that the alleged infringer knowingly induced
infringement and possessed specific intent to encourage
another’s infringement.” DSU Med. Corp. v. JMS Co.,
471 F.3d 1293, 1306 (Fed. Cir. 2006) (en banc) (internal
quotation marks omitted). 1 On the other hand, induce-

1 Because liability for inducement, unlike liability
for direct infringement, requires specific intent to cause
infringement, using inducement to reach joint infringe-
ment does not present the risk of extending liability to
persons who may be unaware of the existence of a patent
or even unaware that others are practicing some of the
steps claimed in the patent.
15 AKAMAI TECH v. LIMELIGHT NETWORKS

ment does not require that the induced party be an agent
of the inducer or be acting under the inducer’s direction or
control to such an extent that the act of the induced party
can be attributed to the inducer as a direct infringer. It is
enough that the inducer “cause[s], urge[s], encourage[s],
or aid[s]” the infringing conduct and that the induced
conduct is carried out. Arris Grp., Inc. v. British Tele-
comms. PLC, 639 F.3d 1368, 1379 n.13 (Fed. Cir. 2011);
see also Tegal Corp. v. Tokyo Electron Co., 248 F.3d 1376,
1379 (Fed. Cir. 2001); Nat’l Presto Indus., Inc. v. West
Bend Co., 76 F.3d 1185, 1196 (Fed. Cir. 1996) (analogizing
inducement to aiding and abetting violations of criminal
laws).

An important limitation on the scope of induced in-
fringement is that inducement gives rise to liability only
if the inducement leads to actual infringement. That
principle, that there can be no indirect infringement
without direct infringement, is well settled. Deepsouth
Packing Co. v. Laitram Corp., 406 U.S. 518, 526 (1972);
Aro Mfg. Co. v. Convertible Top Replacement Co., 365 U.S.
336, 341 (1961); Henry v. A.B. Dick Co., 224 U.S. 1, 12
(1912). The reason for that rule is simple: There is no
such thing as attempted patent infringement, so if there
is no infringement, there can be no indirect liability for
infringement.

That much is uncontroversial. In BMC, however, this
court extended that principle in an important respect that
warrants reconsideration. In that case, the court ruled
that in order to support a finding of induced infringement,
not only must the inducement give rise to direct in-
fringement, but in addition the direct infringement must
be committed by a single actor. The court reached that
conclusion based on the propositions that (1) liability for
induced infringement requires proof of direct infringe-
AKAMAI TECH v. LIMELIGHT NETWORKS 16

ment and (2) liability for direct infringement requires that
a single party commit all the acts necessary to constitute
infringement. While those two propositions were well
supported in this court’s law, the conclusion that the court
drew from them was not.

Requiring proof that there has been direct infringe-
ment as a predicate for induced infringement is not the
same as requiring proof that a single party would be
liable as a direct infringer. If a party has knowingly
induced others to commit the acts necessary to infringe
the plaintiff’s patent and those others commit those acts,
there is no reason to immunize the inducer from liability
for indirect infringement simply because the parties have
structured their conduct so that no single defendant has
committed all the acts necessary to give rise to liability
for direct infringement.

A party who knowingly induces others to engage in
acts that collectively practice the steps of the patented
method—and those others perform those acts—has had
precisely the same impact on the patentee as a party who
induces the same infringement by a single direct in-
fringer; there is no reason, either in the text of the statute
or in the policy underlying it, to treat the two inducers
differently. In particular, there is no reason to hold that
the second inducer is liable for infringement but the first
is not.

Likewise, a party who performs some of the steps it-
self and induces another to perform the remaining steps
that constitute infringement has precisely the same
impact on the patentee as a party who induces a single
person to carry out all of the steps. It would be a bizarre
result to hold someone liable for inducing another to
perform all of the steps of a method claim but to hold
17 AKAMAI TECH v. LIMELIGHT NETWORKS

harmless one who goes further by actually performing
some of the steps himself. The party who actually par-
ticipates in performing the infringing method is, if any-
thing, more culpable than one who does not perform any
steps.

The text of the induced infringement statute is en-
tirely consistent with this analysis. While the direct
infringement statute, section 271(a), states that a person
who performs the acts specified in the statute “infringes
the patent,” section 271(b) is structured differently. It
provides that whoever “actively induces infringement of a
patent shall be liable as an infringer.” Nothing in the text
indicates that the term “infringement” in section 271(b) is
limited to “infringement” by a single entity. Rather,
“infringement” in this context appears to refer most
naturally to the acts necessary to infringe a patent, not to
whether those acts are performed by one entity or several.

C

The legislative history of the 1952 Patent Act provides
strong support for interpreting induced infringement not
to require that a single entity—as opposed to multiple
entities—commit all the acts necessary to constitute
infringement. Prior to the 1952 Act, inducement and
contributory infringement were both referred to under the
rubric of contributory infringement. Giles S. Rich, In-
fringement Under Section 271, 21 Geo. Wash. L. Rev. 521,
537 (1953). The 1952 Act broke the two concepts out into
separate subsections of section 271, covering induced
infringement (in subsection (b)) and contributory in-
fringement (in subsection (c)). Subsection (b), the new
inducement provision, was broad in scope. The House
Report on the 1952 Act explained that the new subsection
(b) “recites in broad terms that one who aids and abets an
AKAMAI TECH v. LIMELIGHT NETWORKS 18

infringement is likewise an infringer.” H.R. Rep. No. 82-
1923, at 9. See also P.J. Federico, Commentary on the
New Patent Act reprinted in 75 J. Pat. & Trademark Off.
Soc’y 161, 214 (1993) (section 271(b) “is a broad statement
and enactment of the principle that one who actively
induces infringement of a patent is likewise liable for
infringement”). 2 On the other hand, subsection (c) repre-
sented a compromise between differing views as to the
proper scope of the doctrine of contributory infringement.
The portions of the legislative history addressing subsec-
tion (c) show that it was responding to the Supreme
Court’s decisions in several then-recent cases that had
applied the doctrine of patent misuse in a way that sub-
stantially restricted the scope of contributory infringe-
ment. 3 The compromise that Congress adopted with
respect to subsection (c) restored the doctrine of contribu-
tory infringement and confined the scope of the Supreme
Court’s patent misuse cases, but it did not go as far as
some in the patent bar would have liked. See Hearing on
H.R. 3866 Before Subcomm. No. 4 of the H. Comm. on the
2 Federico’s commentary, first published in 1954,
has been cited by this court as constituting “an invaluable
insight into the intentions of the drafters of the Act.”
Symbol Techs., Inc. v. Lemelson Med., 277 F.3d 1361,
1366 (Fed. Cir. 2002).
3 The cases to which the legislation was principally
directed were Mercoid Corp. v. Mid-Continent Investment
Co., 320 U.S. 661 (1944), and Mercoid Corp. v. Minneapo-
lis-Honeywell Regulator Co., 320 U.S. 680 (1944), which
extended the patent misuse doctrine of Carbice Corp. of
America v. American Patents Development Corp., 283 U.S.
27 (1931), and Leitch Manufacturing Co. v. Barber Co.,
302 U.S. 458 (1938). See Contributory Infringement of
Patents: Hearings Before the Subcomm. on Patents, Trade-
marks, and Copyrights of the H. Comm. on the Judiciary,
80th Cong. 4 (1948) (statement of G. Rich on behalf of the
New York Patent Law Association).
19 AKAMAI TECH v. LIMELIGHT NETWORKS

Judiciary, 81st Cong. 20 (1949) (“1949 Hearing”) (state-
ment of G. Rich) (“So we have made what we consider to
be a fair compromise, and we have pushed back these
misuse situations to cover only those cases where we
think the patentee is entitled to honest protection and
justice.”).

Although less was said about induced infringement
than about contributory infringement in the legislative
history, what was said was significant. Giles Rich, one of
the principal drafters of the statute, and a frequent
witness at hearings on the legislation, made clear in the
course of his statement during an early House hearing on
contributory infringement that the revised provisions on
infringement were intended to reach cases of divided
infringement, even when no single entity would be liable
for direct infringement. In the course of his statement
commenting on the proposed version of what was to
become section 271(b) of the 1952 Act, Judge (then Mr.)
Rich addressed the problem of “combination patents” and
stated the following:
Improvements in such arts as radio communi-
cation, television, etc., sometimes involve the new
combinations of elements which in use are nor-
mally owned by different persons. Thus, a new
method of radio communication may involve a
change in the transmitter and a corresponding
change in the receiver. To describe such an inven-
tion in patent claims, it is necessary either to
specify a new method which involves both trans-
mitting and receiving, or a new combination of an
element in the receiver and an element in the
transmitter. There are patents with such claims
covering television inventions of importance.
AKAMAI TECH v. LIMELIGHT NETWORKS 20

The recent decisions of the Supreme Court
[the cases targeted by the statutory changes] ap-
pear to make it impossible to enforce such patents
in the usual case where a radio transmitter and a
radio receiver are owned and operated by different
persons, for, while there is obvious infringement of
the patent, there is no direct infringer of the patent
but only two contributory infringers.
Contributory Infringement of Patents: Hearings Before the
Subcomm. on Patents, Trade-marks, and Copyrights of the
H. Comm. on the Judiciary, 80th Cong. 5 (1948) (“1948
Hearing”) (statement of G. Rich on behalf of the New York
Patent Law Association) (emphasis added).

Judge Rich’s statement makes clear that he saw no
anomaly in finding liability for indirect infringement
when there was “obvious infringement of the patent” even
though there was “no direct infringer of the patent.” In
the hypothetical case that he described, involving a claim
to a method in which changes would be made in both a
transmitter and a receiver, he expressly stated that the
“obvious infringement” should be remediable, even though
“there is no direct infringer” of the patent, a description
that perfectly fits the two cases before us.

As if to lay to rest any doubts as to his views of the
proper scope of indirect infringement under the new
statute, Judge Rich added, in response to questioning,
that “contributory infringement [apparently referring to
both contributory infringement and induced infringe-
ment] is a specific application to patent law of the law of
joint tort feasor where two people somehow together
create an infringement which neither one of them indi-
vidually or independently commits.” Id. at 12; see also
1949 Hearing 3 (remarks of G. Rich) (“When two people
21 AKAMAI TECH v. LIMELIGHT NETWORKS

combine and infringe a patent in some way or other, they
are joint tort feasors, and it so happens that patents are
often infringed by people acting in concert, either specifi-
cally or by implication, where neither one of them is a
direct infringer.”). Again, Judge Rich’s comments clearly
indicate that he viewed indirect infringement as an
available remedy even in the absence of any single direct
infringer.

The principles of contributory and induced infringe-
ment set forth in the earlier bills were carried forward
into the 1952 Act and continued to serve the purpose of
restoring the principles of contributory infringement that
had been cast into doubt by the then-recent patent misuse
decisions. See H.R. Rep. No. 82-1923, at 9 (1952); Patent
Law Codification and Revision, Hearings Before Sub-
comm. No. 3 of the H. Comm. on the Judiciary, 82d Cong.
151-52 (1951); Rich, Infringement Under Section 271,
supra, at 535-36, 541 (substance of 271 was carried for-
ward from previous bills).

D

A principal’s liability for acts committed not only
through an agent but also by an innocent intermediary
who was induced by the principal is not an idiosyncrasy of
patent law, but is found in other areas of the law as well.
For example, the aiding and abetting provision in the
Federal Criminal Code states, in language similar to the
language of section 271(b) of the Patent Act, that
“[w]hoever commits an offense against the United States
or aids, abets, counsels, commands, induces or procures
its commission is punishable as a principal,” 18 U.S.C. §
2(a), and “[w]hoever willfully causes an act to be done
which if directly performed by him or another would be an
offense against the United States, is punishable as a
AKAMAI TECH v. LIMELIGHT NETWORKS 22

principal,” id. § 2(b). That statute has been construed to
permit the conviction of an accessory who induces or
causes a criminal offense even when the principal is found
not liable for the unlawful conduct. Standefer v. United
States, 447 U.S. 10, 19 (1980). As long as the induced
criminal conduct has occurred, the inducer’s liability does
not turn on whether the intermediary is factually guilty
or even capable of committing the charged offense. See
United States v. Tobon-Builes, 706 F.2d 1092, 1099 (11th
Cir. 1983) (defendant is liable if he causes an intermedi-
ary to commit a criminal act, even though the intermedi-
ary who performed the act has no criminal intent and
hence is innocent of the substantive crime charged);
United States v. Gleason, 616 F.2d 2, 20 (2d Cir. 1979)
(“[A] person who causes an innocent party to commit an
act which, if done with the requisite intent, would consti-
tute an offense may be found guilty as a principal even
though he personally did not commit the criminal act.);
United States v. Rapoport, 545 F.2d 802, 806 (2d Cir.
1976) (“Section 2(b) . . . ‘removes all doubt that one who
puts in motion or assists in the illegal enterprise or
causes the commission of an indispensable element of the
offense by an innocent agent or instrumentality, is guilty.
. . .’”) (quoting Reviser’s Note to section 2(b)). 4 Under that
provision, a defendant cannot avoid criminal liability by

4 Shuttlesworth v. City of Birmingham, 373 U.S.
262 (1963), cited in Judge Linn’s dissent, is inapposite. In
that case, the underlying act was innocent, not because of
any lack of scienter or immunity on behalf of the princi-
pals, but because the act the petitioners were charged
with aiding and abetting did not constitute a crime. Id. at
265 (“There was no evidence that any of the demonstra-
tions which resulted from the meeting were disorderly or
otherwise in violation of law.”) By analogy, in patent law
a party would not be liable for inducing infringement by
encouraging others to engage in conduct that is not within
the claims of the patent in suit.
23 AKAMAI TECH v. LIMELIGHT NETWORKS

arranging for another to perform some part of the pro-
scribed conduct. See United States v. Hornaday, 392 F.3d
1306, 1313 (11th Cir. 2004) (“Section 2(b) . . . is obviously
designed for the situation in which . . . the defendant
supplies the intent and maybe another element or two
while getting someone else to supply at least one addi-
tional element that is necessary to the commission of the
crime.”); United States v. Pearson, 667 F.2d 12, 13 (5th
Cir. 1982) (Section 2 “allows a jury to find a person guilty
of a substantive crime even though that person did not
commit all acts constituting the elements of the crime.”).

Tort law also recognizes the doctrine of liability for
inducing innocent actors to commit tortious acts. The
Second Restatement of Torts provides that a person is
liable for tortious conduct if he “orders or induces the
conduct, if he knows or should know of circumstances that
would make the conduct tortious if it were his own.”
Restatement (Second) of Torts § 877(a) (1979). That basis
for liability is “independent of the existence of liability”
based “on the ground that [the defendant] was principal
or master.” Id. § 877 cmt. a.

The analogy to tort law is particularly telling because
for induced infringement under section 271(b) the courts
look to the common law principles of joint tortfeasance.
Hewlett-Packard Co. v. Bausch & Lomb, Inc., 909 F.2d
1464, 1469 (Fed. Cir. 1990); see also Aro Mfg. Co. v. Con-
vertible Top Replacement Co., 377 U.S. 476, 500 (1964).
Prior to the enactment of the Patent Act in 1952, courts
applied indirect infringement to anyone who “commands,
directs, advises, encourages, procures, instigates, pro-
motes, controls, aids, or abets” patent infringement. Rich,
Infringement Under Section 271, supra, at 525. Section
271(b) was enacted to codify that doctrine, which in turn
was based on “the old common law doctrine of joint tort
AKAMAI TECH v. LIMELIGHT NETWORKS 24

feasors.” Id. at 537. In that setting, liability requires
proof that the defendant “knowingly induced infringement
and possessed specific intent to encourage another’s
infringement.” DSU Med. Corp., 471 F.3d at 1306.

The First Restatement of Torts, which was in effect at
the time the 1952 Patent Act was enacted, draws an even
sharper line than the Second Restatement between vi-
carious liability for tortious conduct and liability for
inducing tortious conduct by others. Section 877 of the
First Restatement sets forth the rules of vicarious liability
for “a person directing or permitting conduct of another.”
Restatement of Torts § 877 (1938). Section 876 sets forth
the rules of liability for inducement of tortious conduct,
including the requirement of scienter. It states that a
person is liable if he “orders or induces [tortious] conduct,
knowing of the conditions under which the act is done or
intending the consequences which ensue,” or if he “knows
that the other’s conduct constitutes a breach of duty and
gives substantial assistance or encouragement to the
other so to conduct himself.” Id. § 876.

Moreover, the First Restatement makes clear that the
rule imposing liability for inducement of a tort applies
even if the person being induced is unaware that his act is
injurious and is not liable for that reason. Id. § 876 cmt.
b; see Hoyt v. Clancey, 180 F.2d 152, 158 (8th Cir. 1950)
(defendant liable for false representations passed through
an innocent intermediary; intermediary not liable); Davis
v. Louisville Trust Co., 181 F. 10, 15 (6th Cir. 1910)
(same); Graham v. Ellmore, 26 P.2d 696 (Cal. 1933)
(same); Moyer v. Lederer, 50 Ill. App. 94 (Ill. App. Ct.
1893) (same); Kuehl v. Parmenter, 192 N.W. 429 (Iowa
1923) (same); see also Restatement of Torts § 880 cmt. a
(one who induces a witness to make a defamatory remark
on the witness stand is liable even though the witness
25 AKAMAI TECH v. LIMELIGHT NETWORKS

enjoys immunity from liability); Laun v. Union Elec. Co.,
166 S.W.2d 1065, 1071 (Mo. 1943) (same); Midford v.
Kann, 32 A.D. 228 (N.Y. App. Div. 1898) (defendant liable
for false imprisonment for directing police to arrest for-
mer employees as trespassers without regard to whether
police were liable). The implication of that principle, as
applied in the divided infringement context, is that a
party may be liable for inducing infringement even if none
of the individuals whose conduct constituted infringement
would be liable, as direct infringers, for the act of in-
fringement that was induced. 5

Judge Linn’s dissent argues that the cited cases based
liability on “breach of a direct duty” and are therefore
“direct liability cases.” That misses the point being made.
The cited cases all involved intermediate actors who
directly caused the injury to the plaintiff, but were not
liable for that injury, while the party who induced the
action causing the injury was held liable. As in those
cases, an inducer of infringement has a duty not to cause
the acts that constitute infringement even if the parties
who cause the direct injury are not liable. The law fre-
quently imposes a duty (and liability upon breach of the
duty) on parties who use innocent third parties to carry
out harmful acts. See Pelster v. Ray, 987 F.2d 514, 523-24
(8th Cir. 1993) (civil liability for rolling back odometer
attaches to anyone in the chain of ownership who knew of
fraudulent reading, but not to innocent intermediaries);

5 The same rule extending liability for “intention-
ally inducing or encouraging direct infringement” has
been adopted in copyright law, see Metro-Goldwyn-Mayer
Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930, 936
(2005), but the issue presented in this case—whether the
induced acts of infringement must be performed by a
single entity that would be liable for infringement—does
not appear to have been addressed in copyright cases.
AKAMAI TECH v. LIMELIGHT NETWORKS 26

Learjet Corp. v. Spenlinhauer, 901 F.2d 198, 203 (1st Cir.
1990) (cause of action for fraudulent misrepresentation by
aircraft owner against aircraft manufacturer was proper
where manufacturer allegedly made false representations
to FAA to obtain certification and owner relied on FAA
certification when purchasing aircraft); Hawkins v. Up-
john Co., 890 F. Supp. 609, 611-12 (E.D. Tex. 1994) (indi-
rect reliance by plaintiffs on misrepresentations by
defendants to FDA in effort to secure approval of drugs
was sufficient to state claim of fraud); see also Restate-
ment (Second) of Torts § 533 (one who makes a fraudulent
misrepresentation is subject to liability to one who relies
on it to his detriment, even though the misrepresentation
was not made directly to the injured party).

E

Judge Linn’s dissent argues that the approach we
adopt today has the effect of “defin[ing] direct infringe-
ment differently for the purposes of establishing liability
under §§ 271(a) and (b).” That is not so, and the structure
of section 271 explains why. Section 271(a) does not
define the term “infringement.” Instead, it simply sets
forth a type of conduct that qualifies as infringing, i.e., it
provides that anyone who makes, uses, or sells, etc., any
patented invention “infringes the patent.” Section 271(b)
sets forth another type of conduct that qualifies as in-
fringing, i.e., it provides that anyone who induces in-
fringement “shall be liable as an infringer.” But nothing
in the text of either subsection suggests that the act of
“infringement” required for inducement under section
271(b) must qualify as an act that would make a person
liable as an infringer under section 271(a).

An examination of other subsections of section 271
confirms that the statute uses the term “infringement” in
27 AKAMAI TECH v. LIMELIGHT NETWORKS

a way that is not limited to the circumstances that give
rise to liability under section 271(a). For example, section
271(e)(2) makes it an “act of infringement” to submit an
application to the FDA for a drug, or the use of a drug,
claimed in a patent; that use of the term “infringement” is
not in any way tied to the use of the term “infringes” in
section 271(a). Similarly, section 271(f) provides that a
party shall be “liable as an infringer” if it supplies in the
United States a substantial portion of the components of a
patented invention in such manner as to induce the
combination of those components outside the United
States. Again, the statutory term “infringer” does not
advert to the requirements of section 271(a); indeed, it is
not even necessary that the components are ever actually
assembled abroad after export. See Waymark Corp. v.
Porta Sys. Corp., 245 F.3d 1364, 1367-68 (Fed. Cir. 2001).
Finally, section 271(g) provides that a person who imports
into the United States a product made by a process pat-
ented in the United States “shall be liable as an in-
fringer.” That provision likewise does not require that the
process used to make the imported product be “infringing”
in a way that would satisfy section 271(a), such as being
performed by a single entity.

Judge Linn’s dissent also relies on another provision
of the Patent Act, 35 U.S.C. § 281, which states, “A pat-
entee shall have remedy by civil action for infringement of
his patent.” Section 281, however, was designed to serve
as a “preamble” for the sections on remedies and to en-
sure that an action for infringement (a “civil action”)
would be triable to a jury. See H.R. Rep. No. 82-1923, at
10, 29 (1952). It also serves to ensure that only “[a]
patentee” may bring a civil action for infringement. See
Mentor H/S, Inc. v. Med. Device Alliance, Inc., 240 F.3d
1016, 1017 (Fed. Cir. 2001). It cannot also be read to
mean that any act of infringement will necessarily be
AKAMAI TECH v. LIMELIGHT NETWORKS 28

remediable through a civil action; it does not, for example,
give a patentee a “remedy by civil action” (i.e., in district
court, see Fed. R. Civ. P. 2) against state or federal offi-
cers who are protected from suit and liability by sovereign
immunity or (in the case of federal officers) who are
suable only in a nonjury proceeding in the Court of Fed-
eral Claims.

The origin of section 281 is enlightening in this re-
gard. When the bill that ultimately became the 1952 Act
was first introduced in 1950 (as H.R. 9133), the subsec-
tion that would become section 271 read as follows: “Any
person who makes, uses or sells any patented machine,
manufacture, composition of matter or improvement, or
uses any patented process or improvement, within the
territory of the United States and its Territories during
the term of the patent therefor without authority, in-
fringes the patent and shall be liable to a civil action for
infringement, except as otherwise provided in this title.”
(emphasis added). That version of section 271 stated only
that one who directly infringes a patent shall be liable. It
did not declare that any practicing of a patented invention
necessarily brought with it the right of the patent owner
to recover in a civil action for infringement. The empha-
sized language was later moved and turned into a sepa-
rate section—section 281—but with no indication that a
change in meaning was intended. There is certainly no
suggestion in the legislative history (or in subsequent
caselaw) that section 281 was meant to restrict the scope
of liability for induced infringement under section 271(b)
to cases in which a single entity would be liable for direct
infringement.

Looking to case law, Judge Linn’s dissent relies heav-
ily on prior decisions of this court and on the Supreme
Court’s decision in Aro, contending that those authorities
29 AKAMAI TECH v. LIMELIGHT NETWORKS

compel us to hold that liability for induced infringement
of a method claim depends on showing that a single
induced entity would be liable for direct infringement of
the claim. While the BMC case stands for that proposi-
tion, our earlier precedents, and the Supreme Court’s
decision in Aro, do not so hold.

In reciting the rule that indirect infringement re-
quires a single entity to commit all the acts necessary to
constitute direct infringement, the court in BMC cited
this court’s earlier opinion in Dynacore Holdings Corp. v.
U.S. Philips Corp., 363 F.3d 1263, 1272 (Fed. Cir. 2004).
The cited portion of the Dynacore case stands for the
proposition that indirect infringement “can only arise in
the presence of direct infringement.” 363 F.3d at 1272.
That proposition, however, is different in an important
respect from the proposition articulated in BMC. Dyna-
core required that there be infringement in order for there
to be inducement of infringement. As noted above, that is
a sound and uncontroversial proposition. BMC, however,
extended that proposition to require that a single party
commit the entire act of direct infringement, an extension
that is not supported by the decision in Dynacore. 6 That
broader proposition invites evasion of the principles of

6 The Dynacore case dealt with a patent on a type of
local area network. 363 F.3d at 1266. The issue in the
case was whether manufacturers of networking equip-
ment that was capable of being used to form an infringing
network were liable for indirect infringement. Id. at
1272. Dynacore alleged only a “hypothetical direct in-
fringement” and did not show that any specific infringing
network was ever created. The court held that liability
for indirect infringement required proof that actual
infringement occurred, but the court did not hold that
Dynacore could meet its burden of showing direct in-
fringement only by proving that a single entity created
the infringing network.
AKAMAI TECH v. LIMELIGHT NETWORKS 30

patent infringement and serves no policy-based purpose.
If an entity has induced conduct that infringes a patent,
there is no justification for immunizing the inducer from
liability simply because no single party commits all of the
components of the appropriative act.

Both Limelight and Epic (like Judge Linn’s dissent)
rely on the Supreme Court’s decision in Aro in support of
their contention that liability for inducement requires
that a single party be liable for direct infringement, but
Aro does not stand for that proposition. Aro dealt with a
patent for automobile convertible tops, including the
fabric and supporting structures. 365 U.S. at 337. The
accused product was fabric that was intended to replace
the original fabric in the convertible top when it wore out.
The specific question addressed by the Court was “does
the car owner [directly] infringe (and the supplier con-
tributorily infringe) the combination patent when he
replaces the spent fabric without the patentee’s consent?”
Id. at 339. Because the Court concluded that replacing
the fabric was not an infringing “reconstruction,” but
instead was a permissible “repair,” the Court held that
the car owner did not infringe the patent. And because
there was no direct infringement, there was no contribu-
tory infringement. As the Court explained: “In a word, if
there is no infringement of a patent there can be no
contributory infringer[.]” Id. at 345. Importantly, it was
because the purchaser of the fabric was engaged in repair
rather than reconstruction—and thus was not guilty of
infringement at all—that the Court found there could be
no contributory infringement. That case therefore does
not stand, expressly or implicitly, for the proposition that
there can be no induced infringement if there is actual
infringing conduct but the acts necessary to constitute the
infringement are committed by more than one party.
31 AKAMAI TECH v. LIMELIGHT NETWORKS

In the course of its analysis, the Aro Court quoted
from a dissenting opinion in an earlier case, which stated
that “if the purchaser and user [of a product] could not be
amerced as an infringer certainly one who sold to him . . .
cannot be amerced for contributing to a non-existent
infringement.” Id. (quoting Mercoid Corp. v. Mid-
Continent Inv. Co., 320 U.S. 661, 674 (1944) (Roberts, J.,
dissenting)). Although the reference to a direct infringer
being “amerced” as an infringer could suggest that the
Court considered liability for direct infringement as a
predicate for indirect infringement, the Court in both
cases was addressing direct infringement involving only a
single party.

Unlike the present case, which deals with method
claims, Aro dealt with product claims. In the case of a
product claim, the party that adds the final element to the
combination “makes” the infringing product and thus is
liable for direct infringement even if others make portions
of the product. See Cross Med. Prods., 424 F.3d at 1312
(holding there was a genuine issue of fact as to whether
surgeons infringe by “making” the claimed product when
they complete the last limitation (contacting the anchor
seat of the device with bone)). For product claims, when-
ever the product is made, used, or sold, there is always a
direct infringer. Hence, the Aro Court, dealing only with
product claims, was not presented with the divided in-
fringement question we address today. For that reason,
the Court’s allusion to the potential liability of a direct
infringer cannot reasonably be treated as suggesting that,
as a predicate for indirect infringement, all of the steps
necessary to constitute direct infringement of a method
claim must be committed by a single party.

In cases prior to BMC, this court on numerous occa-
sions recited the familiar and uncontroversial proposition
AKAMAI TECH v. LIMELIGHT NETWORKS 32

that one of the elements of induced infringement is proof
that there has been direct infringement. See, e.g., Micro
Chem., Inc. v. Great Plains Chem. Co., 103 F.3d 1538,
1549 (Fed. Cir. 1997); Joy Techs., Inc. v. Flakt, Inc., 6 F.3d
770, 774 (Fed. Cir. 1993); Met-Coil Sys. Corp. v. Korners
Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986). On
occasion, the court described that principle by reference to
direct infringement by “some party” or the party accused
of direct infringement in the case. See, e.g., Moba, B.V. v.
Diamond Automation, Inc., 325 F.3d 1306, 1318 (Fed. Cir.
2003); Epcon Gas Sys., Inc. v. Bauer Compressors, Inc.,
279 F.3d 1022, 1033 (Fed. Cir. 2002); Crystal Semiconduc-
tor Corp. v. Tritech Microelectronics Int’l, Inc., 246 F.3d
1336, 1351 (Fed. Cir. 2001); Kendall Co. v. Progressive
Med. Tech., Inc., 85 F.3d 1570, 1573 (Fed. Cir. 1996); C.R.
Bard, Inc. v. Advanced Cardiovascular Sys., Inc., 911 F.2d
670, 673 (Fed. Cir. 1990). But in none of those cases did
the court hold that, as a predicate for a finding of indirect
infringement, all the steps of a method claim must be
performed by the same entity. Those cases trace the rule
that direct infringement is a prerequisite for induced
indirect infringement back to the Supreme Court’s opin-
ion in Aro and its predecessors which, as discussed above,
did not require that all the infringing steps be performed
by a single actor.

The cases that predated Aro likewise did not apply
the “single direct infringer” requirement as a predicate for
induced infringement; instead, they emphasized that
what was induced was the fact of infringement, not liabil-
ity for direct infringement by a single actor. In one of the
leading early cases, Judge (later Chief Justice) Taft wrote
for the Sixth Circuit that it was “well settled that where
one makes and sells one element of a combination covered
by a patent with the intention and for the purpose of
bringing about its use in such a combination he is guilty
33 AKAMAI TECH v. LIMELIGHT NETWORKS

of contributory infringement.” Thomson-Houston Elec.
Co. v. Ohio Brass Co., 80 F. 712, 721 (6th Cir. 1897).
Most of the early cases involved product claims, not
process claims, and therefore the ultimate purchaser or
user of the patented invention was a direct infringer, so
the problem of divided infringement did not arise. Where
it did arise, however, courts continued to look to the
doctrine of induced (or contributory) infringement as a
basis for liability of parties who had induced the infring-
ing conduct.

For example, in Solva Waterproof Glue Co. v. Perkins
Glue Co., 251 F. 64 (7th Cir. 1918), the defendants per-
formed one step of a two-step process claim and relied
upon their customers to perform the second step of the
process. The court held the defendant to be a contribu-
tory infringer. It explained that the “rule of law in such
case is that one who makes and sells one element of a
patented combination with the intention and for the
purpose of bringing about its use in such a combination is
guilty of contributory infringement.” 251 F. at 73-74.

Similarly, in Peerless Equipment Co. v. W.H. Miner,
Inc., 93 F.2d 98 (7th Cir. 1937), the Seventh Circuit dealt
with a case closely analogous to the cases at bar. In that
case, which involved a patent containing process claims,
the defendant performed all the steps of the claimed
process except the last. The purchaser would perform the
last step after delivery of the products. The court ob-
served that the defendant knew that the purchasers
would perform that step. Accordingly, the court held that
the defendant was “guilty of contributory infringement of
each of the process claims.” 93 F.2d at 105.

This court reached the same result in Fromson v. Ad-
vance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983).
AKAMAI TECH v. LIMELIGHT NETWORKS 34

The patent in that case involved both product and process
claims. As in the Peerless case, the defendant performed
all but the last step of the recited process; the last step
was performed by the defendant’s customers. Because no
single party performed all the steps, the court stated that
the defendant “cannot be liable for direct infringement.”
Id. at 1568. However, it added, the defendant “could be
liable for contributory infringement.” Id. at 1567-68.
That case thus provides direct support for the two key
propositions at issue in this case: (1) that liability for
direct infringement requires that some actor perform all
of the limitations (including the steps of a process claim),
either personally or vicariously; and (2) that induced
infringement can be found even if there is no single party
who would be liable for direct infringement.

In summing up its objections to this court’s ruling,
Judge Linn’s dissent argues that the court today is mak-
ing a “sweeping change to the nation’s patent policy” that
goes beyond the proper scope of the court’s authority and
that a step such as the one taken by the en banc court
today should be left to Congress. Of course, the question
whether the majority’s position constitutes a change in
the law, or whether the dissent’s position would consti-
tute a change, depends on what one thinks the prior rule
was. Based on the legislative history, general tort princi-
ples, and prior case law, including this court’s decision in
Fromson, we believe that BMC and the cases that have
followed it changed the pre-existing regime with respect
to induced infringement of method claims, although
admittedly at that time there were relatively few cases in
which that issue had arisen. In either event, the court’s
task is to attempt to determine what Congress had in
mind when it enacted the induced infringement statute in
1952. At the end of the day, we are persuaded that Con-
gress did not intend to create a regime in which parties
35 AKAMAI TECH v. LIMELIGHT NETWORKS

could knowingly sidestep infringement liability simply by
arranging to divide the steps of a method claim between
them. And we have found no evidence to suggest that
Congress intended to create different rules for method
claims than for other types of claims. While we believe
that our interpretation of section 271(b) represents sound
policy, that does not mean that we have adopted that
position as a matter of policy preference. In the process of
statutory interpretation, it is relevant to ask what policy
Congress was attempting to promote and to test each
party’s proposed interpretation by asking whether it
comports with that policy. In these cases, we conclude
that it is unlikely that Congress intended to endorse the
“single entity rule,” at least for the purpose of induced
infringement, advocated by Epic and Limelight, which
would permit ready evasion of valid method claims with
no apparent countervailing benefits.

III

In the McKesson case, Epic can be held liable for in-
ducing infringement if it can be shown that (1) it knew of
McKesson’s patent, (2) it induced the performance of the
steps of the method claimed in the patent, and (3) those
steps were performed. McKesson preserved its claim of
induced infringement, even though this court’s decisions
in BMC and Muniauction made the inducement claim
difficult to maintain. McKesson is entitled to litigate that
issue on remand to the district court.

In the Akamai case, although the jury found that the
content providers acted under Limelight’s direction and
control, the trial court correctly held that Limelight did
not direct and control the actions of the content providers
as those terms have been used in this court’s direct in-
fringement cases. Notwithstanding that ruling, under the
AKAMAI TECH v. LIMELIGHT NETWORKS 36

principles of inducement laid out above, Limelight would
be liable for inducing infringement if the patentee could
show that (1) Limelight knew of Akamai’s patent, (2) it
performed all but one of the steps of the method claimed
in the patent, (3) it induced the content providers to
perform the final step of the claimed method, and (4) the
content providers in fact performed that final step.

Although the patentee in Akamai did not press its
claim of induced infringement at trial, it argues this court
should overrule “the mistaken view that only a single
entity can infringe a method claim.” That argument,
while focused on direct infringement, is critical to the
conclusion that divided infringement can give rise to
liability, whether under a theory of direct infringement or
induced infringement. While we do not hold that Akamai
is entitled to prevail on its theory of direct infringement,
the evidence could support a judgment in its favor on a
theory of induced infringement. For that reason, we
conclude that Akamai should be given the benefit of this
court’s ruling disapproving the line of divided infringe-
ment cases that the district court felt compelled to follow.
We therefore reverse the judgment in both cases and
remand in both cases for further proceedings on the
theory of induced infringement.

REVERSED and REMANDED
 United States Court of Appeals
for the Federal Circuit
__________________________

AKAMAI TECHNOLOGIES, INC.,
Plaintiff-Appellant,
AND

THE MASSACHUSETTS INSTITUTE OF
TECHNOLOGY,
Plaintiff-Appellant,
v.
LIMELIGHT NETWORKS, INC.,
Defendant-Cross Appellant.
__________________________

2009-1372, -1380, -1416, -1417
__________________________

Appeal from the United States District Court for the
District of Massachusetts in Nos. 06-CV-11109 and 06-
CV-11585, Judge Rya W. Zobel.

__________________________

AND

MCKESSON TECHNOLOGIES, INC. (formerly
McKesson Information Solutions, LLC),
Plaintiff-Appellant,
v.
AKAMAI TECH v. LIMELIGHT NETWORKS 2

EPIC SYSTEMS CORPORATION,
Defendant-Appellee.
__________________________

2010-1291
__________________________

Appeal from the United States District Court for the
Northern District of Georgia in No. 06-CV-2965, Judge
Jack T. Camp.

__________________________

NEWMAN, Circuit Judge, dissenting.
This en banc court has split into two factions, neither
of which resolves the issues of divided infringement. A
scant majority of the court adopts a new theory of patent
infringement, based on criminal law, whereby any entity
that “advises, encourages, or otherwise induces,” maj. op.
14, or “causes, urges, encourages, or aids the infringing
conduct,” id. at 15, is liable for the infringing conduct.
The majority further holds that only the “inducer” is
liable for divided infringement, and that the direct in-
fringers are not liable although the patent rights are
“plainly being violated by the actors’ joint conduct.” Id. at
10. These are dramatic changes in the law of infringe-
ment.
On this new “inducement-only rule,” the inducing en-
tity is liable on greatly enlarged grounds, such as merely
advising or encouraging acts that may constitute direct
infringement. This new rule is not in accordance with
statute, precedent, and sound policy. It raises new issues
unrecognized by the majority, and contains vast potential
for abuse. In turn, the two cases here on appeal can
readily be resolved under existing law, as the majority
3 AKAMAI TECH v. LIMELIGHT NETWORKS

opinion almost acknowledges in its remand instructions.
Maj. op. 35–36.
In contrast, a significant minority of the en banc court
continues to favor the “single-entity rule,” whereby di-
vided infringement is not actionable at all unless all of the
participants are in a contract or agency relationship that
is directed or controlled by a single “mastermind.” Al-
though review of the singe-entity rule was the sole reason
for this rehearing en banc, and the sole question briefed
by the parties and the amici curiae, this aspect is not
resolved by the majority, which simply states that it will
not review the law of direct infringement, apparently on
the theory that the inducement-only rule renders irrele-
vant whether there is a single mastermind of the direct
infringement.
Neither faction provides a reasonable answer to the
en banc questions concerning divided infringement.
However, the issues of liability and remedy arising from
interactive methods and collaborative performance are
readily resolved by application of existing law. Issues of
induced infringement are not new, but this aspect is ill
served by the majority’s distortion of the inducement
statute, 35 U.S.C. §271(b), and has no support in theory
or practice. This new rule simply imposes disruption,
uncertainty, and disincentive upon the innovation com-
munities. I respectfully dissent.
DISCUSSION
This en banc court was convened in order to resolve
inconsistencies in past panel rulings for situations in
which different entities perform separate parts of a pat-
ented method. In the two earlier decisions whose rulings
were the announced focus of this en banc review, BMC
Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed.
Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532
AKAMAI TECH v. LIMELIGHT NETWORKS 4

F.3d 1318 (Fed. Cir. 2008), panels of this court held that
when separate entities perform the steps of a patented
method, there cannot be direct infringement unless a
single mastermind directs or controls the performance of
all of the steps. These decisions held that since there
cannot be direct infringement without such direction or
control, there cannot be indirect infringement by induce-
ment or contributory infringement. Thus, the court held
that there can be no liability for infringement, although
all of the claim steps are performed. BMC Resources, 498
F.3d at 1379; Muniauction, 532 F.3d at 1329. This single-
entity rule was applied by the district courts in the
Akamai and McKesson decisions that are here on appeal,
to deny all liability for infringement. We took these
appeals en banc in order to resolve the conflicts within
precedent.
The en banc court has been unable to reach consen-
sus. The dissenting opinion authored by Judge Linn
adheres to the single-entity rule, and the majority opinion
presents the new position that when more than one entity
performs the steps of a patented invention, the only liable
entity is the inducer, not those who directly infringe the
claim. Such an inducement-only rule has never been
held, in any case. It has no foundation in statute, or in
two centuries of precedent. The en banc majority, em-
bracing this new rule, does not acknowledge the new
problems of enforcement and compensation and defense
that are also created, the new opportunities for games-
manship and abuse and inequity. For example, if the
direct infringers are not liable for infringement, one
wonders whether they are subject to damages or injunc-
tion. These and other critical issues should be considered
before a new law of inducement-only infringement is
adopted.
5 AKAMAI TECH v. LIMELIGHT NETWORKS

The majority holds that there is “a duty not to cause
the acts that constitute infringement even if the parties
who cause the direct injury are not liable.” Maj. op. 25. I
agree that we all have a duty to respect the law, but in
the complexities of technology and commerce, one must
wonder at the imposition of liability solely for “urg[ing]”
or encourag[ing],” id. at 15, while exonerating direct
infringers from liability when the patented method is
“collectively practice[d].” Id. at 16.
The prior laws of infringement effectively handled in-
teractive and collaborative forms of infringement, before
either the single-entity rule or the inducement-only rule.
Before the law is changed so that only an inducer can be
liable for divided infringement, on loose criteria for in-
ducement, this court should at least obtain the advice of
those who understand the consequences of this change in
infringement law. This unannounced en banc ruling is
made without briefing by the parties or notice to the
amici curiae. 1

1 Briefs amicus curiae were filed by Altera Corp.,
HTC Corp., HTC America, Inc., and Weatherford Interna-
tional; American Intellectual Property Law Association;
Aristocrat Technologies Australia Pty Ltd. and Aristocrat
Technologies, Inc.; Apple Inc.; Biotechnology Industry
Organization; Boston Patent Law Association; CTIA—The
Wireless Association and MetroPCS Wireless, Inc.; Cas-
cades Ventures, Inc. and VNS Corp.; Cisco Systems, Inc.,
Dell, Inc., eBay Inc., Google Inc., Hewlett-Packard Co.,
Intel Corp., Intuit, Inc., Micron Technology, Inc., NetApp,
Inc., RingCentral, Inc., SAP America, Inc., Symantec
Corp., Yahoo, Inc., and Zynga Inc.; Conejo Vally Bar
Association; Electronic Frontier Foundation; Encore Wire
Corp.; Facebook, Inc. and LinkedIn Corp.; Internet Re-
tailers; Myriad Genetics, Inc.; New York Intellectual
Property Law Association; Pharmaceutical Research and
Manufacturers of America; Shuffle Master, Inc.; The
Financial Services Roundtable; San Diego Intellectual
AKAMAI TECH v. LIMELIGHT NETWORKS 6

I
THE EN BANC ISSUE
The only issue for which these cases were taken en
banc, the only issue on which briefing was solicited from
the parties and amici curiae, was the conflict in precedent
arising from the single-entity rule of BMC Resources and
Muniauction. The concerned communities had expressed
concern with this conflict, but the en banc majority now
declines its responsibility, and states that “we have no
occasion at this time to revisit any of those principles
regarding the law of divided infringement as it applies to
liability for direct infringement.” Maj. op. 13. The major-
ity rejects the single-entity rule only “as a predicate for a
finding of indirect infringement.” Id. at 32. The majority
explains that it overrules BMC Resources “in which we
held that in order for a party to be liable for induced
infringement, some other single entity must be liable for
direct infringement.” Id. at 10.
Instead, the majority holds that when more than one
entity is involved, only the inducer is liable for infringe-
ment, although the patent rights are “plainly being vio-
lated by the actors’ joint conduct,” and the inducer acts to
“encourage[]” the infringement. Id. at 10, 14. The court
thus avoids the en banc issue, even as it creates a new
liability; yet the court gives no attention to the accompa-
nying new issues such as the measure of damages, or the
availability of remedy against direct infringement. While
the majority states that it “overrule[s]” BMC Resources,
id. at 10, it is far from clear, for the majority also cites
BMC Resources and Muniauction as precedent, id. at 13
(“[T]his court has rejected claims of liability for direct

Property Law Association, The Foundry Group, First
Round Capital, and Kedrosky Capital; Thomson Reuters
Corp.; and Washington State Patent Law Association.
7 AKAMAI TECH v. LIMELIGHT NETWORKS

infringement of method claims in cases in which several
parties have collectively committed the acts necessary to
constitute direct infringement, but no single party has
committed all of the required acts.”), and id. (“To be sure,
the court has recognized that direct infringement applies
when the acts of infringement are committed by an agent
of the accused infringer or a party acting pursuant to the
accused infringer’s direction or control.”). The majority
appears to overrule only a single sentence of BMC Re-
sources, at 498 F.3d at 1379: “Indirect infringement
requires, as a predicate, a finding that some party
amongst the accused actors has committed the entire act
of direct infringement.” The majority also defines “in-
ducement” as not “direction or control to such an extent
that the act of the induced party can be attributed to the
inducer as a direct infringer,” maj. op. 15, and preserves
the rulings of Muniauction and Golden Hour Data Sys-
tems, Inc. v. emCharts, Inc., 614 F.3d 1367 (Fed. Cir.
2010), and holds that interactive and collaborative in-
fringement is not actionable. The majority’s theory is a
spontaneous judicial creation. And it is wrong.
It is apparent that this jurisprudence is in need of
correction, clarification, and consistency, for neither the
single-entity rule nor the majority’s newly minted in-
ducement-only rule is in accord with the infringement
statute, or with any reasonable infringement policy. In
contrast, the established law and precedent of 35 U.S.C.
§271 can readily reach and remedy every infringement
situation that has been presented.
Cases of divided infringement have not caused past
turmoil, as the majority announces. However, turmoil
will surely be created, to the detriment of technological
advance and its industrial development, for stability and
clarity of the law are essential to innovative commerce.
AKAMAI TECH v. LIMELIGHT NETWORKS 8

II
THE SINGLE-ENTITY RULE
Questions of divided infringement are not new, but
resolution by way of the single-entity rule is plainly
inadequate. The district court remarked in the McKesson
case, after applying this court’s rulings in BMC Resources
and Muniauction, that the single-entity rule leaves a
meritorious patentee without redress:
[T]he single entity rule and BMC’s interpretation
thereof severely limits the protection provided for
patents which would otherwise be valid and en-
forceable. . . . As long as the sale of a product con-
stitutes an arms length transaction between the
customer and the infringing company, which is in-
sufficient to create vicarious liability, the patent
holder would likely have no redress against the
infringer. This result weakens the policy of pro-
viding protection to those who devote the time and
resources to develop otherwise novel and pat-
entable methods.
McKesson Info. Solutions LLC v. Epic Sys. Corp., 2009
WL 2915778, at *7 (N.D. Ga. Sept. 8, 2009).
In McKesson the first step of the multi-step claim to
an interactive health-care method requires the patient to
enter the system—a step held not directed or controlled
by contract or agency, whereby the district court stated
that it was required to hold that there was not direct
infringement, and thus that McKesson’s claim for induced
infringement must fail. Had the district court not been
constrained by the single-entity rule, the case could easily
have been decided on long-standing infringement law.
9 AKAMAI TECH v. LIMELIGHT NETWORKS

Direct infringement may be by more than one entity
The court in BMC Resources held that the single-
entity rule “derives from the statute itself,” 498 F.3d at
1380, and the defendants herein press this argument.
The statute at §271(a) states the fundamental require-
ments of patent infringement, and is sometimes called the
“direct infringement” provision:
§271(a) Except as otherwise provided in this title,
whoever without authority makes, uses, offers to
sell, or sells any patented invention, within the
United States or imports into the United States
any patented invention during the term of the
patent therefor, infringes the patent.
The word “whoever” in §271(a) does not support the
single-entity rule. By statutory canon the word “whoever”
embraces the singular and plural. The first statute in the
United States Code, 1 U.S.C. §1, states that:
§1. In determining the meaning of any Act of
Congress, unless the context indicates other-
wise—
words importing the singular include and
apply to several persons, parties, or things; . . . the
words ‘person’ and ‘whoever’ include corporations,
companies, associations, firms, partnerships, so-
cieties, and joint stock companies, as well as indi-
viduals . . . .
This principle was cited in United States v. Oregon & C.R.
Co., 164 U.S. 526, 541 (1896) and Barr v. United States,
324 U.S. 83, 91 (1945). The usage “whoever” appears not
only in §271 of Title 35, but in §§101, 161, and 171 in
referring to inventors without distinguishing between
singular and plural. See In re Henriksen, 399 F.2d 253,
258 (CCPA 1968) (1 U.S.C. §1 applies to Title 35). Nei-
AKAMAI TECH v. LIMELIGHT NETWORKS 10

ther the defendants nor any amicus has offered any
reason to view “whoever” differently in §271, the patent
infringement statute.
Direct infringement requires that every claimed step
of a patented method or system is performed in accor-
dance with the limitations stated in the claim. Thus,
when more than one entity performs all of the steps, the
claim is directly infringed. Until the rulings in BMC
Resources and Muniauction, it was not disputed that
when a claimed method is performed without authoriza-
tion, the claim is infringed. See, e.g., Graver Tank & Mfg.
Co. v. Linde Air Products Co., 339 U.S. 605, 607 (1950) (“If
accused matter falls clearly within the claim, infringe-
ment is made out and that is the end of it.”); Warner–
Jenkinson Co. v. Hilton Davis Chem. Co., 520 U.S. 17, 29
(1997) (for infringement, every element of the claim must
be performed, literally or by an equivalent).
Infringement is not a question of how many people it
takes to perform a patented method. The Court observed
in Aro Manufacturing Co. v. Convertible Top Replacement
Co., 365 U.S. 336, 342 (1961) that Ҥ271(a) of the new
Patent Code, which defines ‘infringement,’ left intact the
entire body of case law on direct infringement.” As ap-
plied to the steps of a claimed process, the law before and
after the 1952 Act has been stable. E.g., Joy Techs., Inc.
v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993) (to infringe
a process claim, every claimed step of the process must be
performed); Mowry v. Whitney, 81 U.S. 620, 652 (1871):
The exclusive use of them singly is not secured to
him. What is secured is their use when arranged
in the process. Unless one of them is employed in
making up the process, and as an element of it,
the patentee cannot prevent others from using it.
11 AKAMAI TECH v. LIMELIGHT NETWORKS

The Court stated in Deepsouth Packing Co. v. Laitram
Corp., 406 U.S. 518, 522 (1972) that “Infringement is
defined by 35 U.S.C. §271 in terms that follow those of
§154.” Section 154, “the keystone provision of the patent
code,” id., codifies every patentee’s right to exclude “oth-
ers” from practicing the patented invention:
§154(a)(1) Every patent shall contain a short title
of the invention and a grant to the patentee, his
heirs or assigns, of the right to exclude others
from making, using, offering for sale, or selling
the invention . . . .
The legislative history of the 1952 Patent Act reflects the
linkage between §154 and §271, the House Committee
Report explaining that §271(a) was “not actually neces-
sary”:
Section 271, paragraph (a), is a declaration of
what constitutes infringement. There is no decla-
ration of what constitutes infringement in the pre-
sent statute. It is not actually necessary because
the granting clause [35 U.S.C. §154] creates cer-
tain exclusive rights and infringement would be
any violation of those rights.
H.R. Rep. No. 82-1923, at 9 (1952). The same guidance
appears in the Senate Committee Report, S. Rep. No. 82-
1979, at 8 (1952). Giles S. Rich, a principal contributor to
the 1952 Patent Act, summarized that “Paragraph (a)
defines direct infringement and is present only for the
sake of completeness. We got along without it for 162
years and we could again. Its omission would change
nothing.” G.S. Rich, Infringement Under Section 271 of
the Patent Act of 1952, 21 Geo. Wash. L. Rev. 521, 537
(1953).
AKAMAI TECH v. LIMELIGHT NETWORKS 12

The linkage between §154 and §271 finds its mooring
in the law as summarized in Professor Robinson’s classic
The Law of Useful Inventions (1890) at Section 897:
The nature of the act of infringement is indi-
cated by that of the exclusive right which it in-
vades. Hence an infringement may be committed
either by making, using, or selling the patented
invention. These words, however, are interpreted
as comprehending every method by which the in-
vention can be made available for the benefit of
the infringer, and any person who participates in
any wrongful appropriation of the invention be-
comes thereby a violator of the rights protected by
the patent.
(footnote omitted). This court has lost sight of this statu-
tory foundation, although, as the Court explained in
Bauer & Cie v. O’Donnell, 229 U.S. 1, 10 (1913), “Con-
gress did not use technical or occult phrases” in “defining
the extent of the rights and privileges secured to a pat-
entee.”
The conflicts in precedent should be resolved
Although the word “whoever” in the infringement
statute is not limited to a single-entity, this does not
resolve the questions of joint or collaborative or interac-
tive infringement that are raised by this court’s rulings in
BMC Resources and Muniauction, and relied on by the
district courts in Akamai and McKesson. In BMC Re-
sources this court held that the claims could not be di-
rectly infringed, on facts whereby the defendant
Paymentech, who provided a computerized system for
verifying and paying debit transactions, did not direct or
control the performance of separate process steps by the
debit networks that routed the transactions to the finan-
cial institutions who paid the amounts verified. Although
13 AKAMAI TECH v. LIMELIGHT NETWORKS

Paymentech administered the system and provided
transaction information to the debit networks, the panel
observed that it was not shown that “Paymentech also
provides instructions or directions regarding the use of
those data,” and that there was “no evidence even of a
contractual relationship between Paymentech and the
financial institutions.” BMC Resources, 498 F.3d at 1381–
82. The panel held that because Paymentech did not
direct or control the actions of these participating entities,
the claims were not directly infringed, and that without
direct infringement there could not be induced or con-
tributory infringement by the provider of the claimed
method.
In Muniauction this court elaborated on BMC Re-
sources, and explained that direction or control requires
more than controlling access to a system or the issuance
of instructions for performance of a claim step. The
claimed invention was a method of conducting bond
auctions over an electronic network, and the patentee
Muniauction had argued that direct infringement was
met because the defendant Thomson controlled access to
the auction system and instructed bidders on participat-
ing in the system. At the trial the district court in-
structed the jury on the law of direct infringement, as
follows:
Consider whether the parties are acting jointly or
together in relation to the electronic auction proc-
ess. Are they aware of each other’s existence and
interacting with each other in relation to the elec-
tronic auction process? Is there one party teach-
ing, instructing, or facilitating the other party’s
participation in the electronic auction process?
These are the types of questions that you should
ask in making your decision on this issue. If you
find that there is a sufficient connection between
AKAMAI TECH v. LIMELIGHT NETWORKS 14

Thomson and the bidders and the issuers that
used Thomson’s process, then you could find
Thomson liable for direct infringement.
Jury instruction, quoted in Muniauction, 532 F.3d at
1329. The jury found that the claims were infringed, and
the district court denied JMOL. On appeal this court
criticized the jury instruction, stating that “none of the
questions identified by the jury instruction are relevant to
whether Thomson satisfies the ‘control or direction’ stan-
dard of BMC Resources.” Id. at 1330. The court held that
although Thomson controlled access to its electronic
auction system and instructed bidders on its use, the
claimed method could not be directly infringed because
Thomson did not direct or control the actions of the bid-
ders.
Applying these principles, the Federal Circuit panel
in Akamai elaborated that the requirements of direction
or control are not satisfied unless any separate entity
involved in direct infringement is acting as the agent of,
or by contract with, the mastermind of the entire per-
formance. 629 F.3d 1311 (Fed. Cir. 2010). This holding
has no support in precedent. In On Demand Machine
Corp. v. Ingram Industries, Inc., 442 F.3d 1331, 1344–45
(Fed. Cir. 2006), this court approved a jury instruction
that summarized precedent as it then existed, as follows:
It is not necessary for the acts that constitute in-
fringement to be performed by one person or en-
tity. When infringement results from the
participation and combined action(s) of more than
one person or entity, they are all joint infringers
and jointly liable for patent infringement. In-
fringement of a patented process or method can-
not be avoided by having another perform one
step of the process or method. Where the in-
15 AKAMAI TECH v. LIMELIGHT NETWORKS

fringement is the result of the participation and
combined action(s) of one or more persons or enti-
ties, they are joint infringers and are jointly liable
for the infringement.
To add to the confusion, some cases declined to follow the
single-entity rule, or carved new exceptions. For example,
in Uniloc USA, Inc. v. Microsoft Corp., 632 F.3d 1292,
1309 (Fed. Cir. 2011) a panel of this court held: “That
other parties are necessary to complete the environment
in which the claimed element functions does not necessar-
ily divide the infringement between the necessary par-
ties.” In Centillion Data Systems, LLC v. Qwest
Communications International, Inc., 631 F.3d 1279, 1285
(Fed. Cir. 2011) a panel of this court held that a claim to a
multi-step system could be directly infringed, although
the infringer did not perform or direct or control “the
back-end processing” of the accused system. In contrast,
in Golden Hour, 614 F.3d at 1371, a panel of this court
held that there could be no direct infringement, although
all of the claim steps were performed by two entities that
“formed a strategic partnership, enabled their two pro-
grams to work together, and collaborated to sell the two
programs as a unit.”
I take note of the Linn cadre’s argument that ingen-
ious patent claim drafting can avoid single-entity prob-
lems, and undoubtedly it would help in some situations. I
do not discourage ingenuity, but the presence or absence
of infringement should not depend on cleverness or luck to
satisfy a malleable single-entity rule. The Court in Daw-
son Chemical Co. v. Rohm & Haas Co., 448 U.S. 176, 188
(1980), discussing the law of contributory infringement,
cautioned lest “the technicalities of patent law” enable
persons “to profit from another’s invention” by performing
“acts designed to facilitate infringement by others.”
AKAMAI TECH v. LIMELIGHT NETWORKS 16

Lessons from copyright law
Useful guidance has evolved in connection with copy-
right law, for copyright and patent law are in “close[]
analogy.” Sony Corp. of Am. v. Universal City Studios,
Inc., 464 U.S. 417, 439 (1984). The Court stated in Metro–
Goldwyn–Mayer Studios Inc. v. Grokster, Ltd., 545 U.S.
913, 930 (2005) that one “infringes vicariously by profiting
from direct infringement while declining to exercise a
right to stop or limit it,” citing Shapiro, Berstein & Co. v.
H.L. Green Co., 316 F.2d 304, 307 (2d Cir. 1963).
Defendants Limelight and Epic Systems state that vi-
carious infringement is inapposite in the cases before us,
for no one entity performs all steps of the claimed inven-
tion. That theory is incorrect. Both of the defendants
agree that agency is a form of attribution, which includes
respondeat superior. Restatement (Third) of Agency
§7.07(1) (2006). However, as explained in A&M Records,
Inc. v. Napster, Inc., 239 F.3d 1004, 1022 (9th Cir. 2001),
“Vicarious copyright liability is an ‘outgrowth’ of respon-
deat superior,” quoting Fonovisa, Inc. v. Cherry Auction,
Inc., 76 F.3d 259, 262 (9th Cir. 1996). Given “the historic
kinship between patent law and copyright law,” Sony, 464
U.S. at 439, there is no reason why agency theory attrib-
utes the performance of claim steps but the principle of
vicarious infringement does not.
The court should simply acknowledge that a broad,
all-purpose single-entity requirement is flawed, and
restore infringement to its status as occurring when all of
the claimed steps are performed, whether by a single
entity or more than one entity, whether by direction or
control, or jointly, or in collaboration or interaction.
17 AKAMAI TECH v. LIMELIGHT NETWORKS

III
THE INDUCEMENT-ONLY RULE
The majority opinion states that “Direct infringement
has not been extended to cases in which multiple inde-
pendent parties perform the steps of the method claim.”
Maj. op. 12. That is of course incorrect. Despite this
challenged statement, the court’s opinion never reaches
the issue, although it was extensively briefed by the
parties and the many amici curiae. Instead, the majority
holds that “[i]t is not necessary for us to resolve that issue
today” of “the question whether direct infringement can
be found when no single entity performs all of the claimed
steps of the patent.” Id. at 10. The authority cited for
“reject[ing] claims of liability for direct infringement of
method claims in cases in which several parties have
collectively committed the acts necessary to constitute
direct infringement” is BMC Resources and Muniauction.
Id. at 13. These are the cases that led to convening this
en banc court. Thus the majority discards decades of
precedent, refuses our en banc responsibility, and states
that “we have no occasion at this time to revisit any of
those principles regarding the law of divided infringement
as it applies to liability for direct infringement.” Id. The
apparent justification is the new inducement-only rule of
liability.
The court holds that only inducement to infringe is
actionable when the claim is practiced by two or more
entities, and that there can be no liability for direct
infringement. The court holds that “the acts necessary to
constitute direct infringement” are different from “the
acts specified in the statute [§271(a)],” id. at 13, 17, and
other new theories. The majority relies on the criminal
law principles codified at 18 U.S.C. §2. However, “[t]he
analogy between accomplice liability and contributory
AKAMAI TECH v. LIMELIGHT NETWORKS 18

infringement fails given careful consideration of the
reasons behind imposing criminal sanctions on indirect
actors.” M. Bartholomew, Cops, Robbers, and Search
Engines: The Questionable Role of Criminal Law in Con-
tributory Infringement Doctrine, 2009 BYU L. Rev. 783,
786. Bartholomew points out at page 807 the differences
between accomplice liability and contributory infringe-
ment:
As it stands currently, contributory infringe-
ment law does not require the strong showings of
intent required for accomplice liability in criminal
law. . . . [W]hile both contributory liability doc-
trines [e.g., induced and contributory infringe-
ment] allow the defendant’s mental state to be
inferred through circumstantial evidence, in-
fringement law takes a comparatively generous
approach in determining what evidence is proba-
tive of knowledge of the underlying illegal act.
Most importantly, accomplice liability places little
stock in the actus reus requirement while con-
tributory infringement decisions often hinge on
whether the defendant’s actions were ‘material’
enough to justify liability.
The LaFave treatise reiterates that “[c]onsiderable confu-
sion exists as to what the accomplice’s mental state must
be in order to hold him accountable for an offense commit-
ted by another.” Criminal Law §13.2, at 712 (5th ed.
2010). 2

2 The majority also defends its adventure into un-
charted infringement law, by reciting other assorted
special statutes, such as the Hatch-Waxman Act’s artifi-
cial infringement provision for challenge to a patent when
there is no case or controversy because there is no in-
fringement, in order to enable generic drug producers to
test the patent while prohibited from making or selling
19 AKAMAI TECH v. LIMELIGHT NETWORKS

The majority opinion states that “the problem pre-
sented by the cases before us [is] whether liability should
extend to a party who induces the commission of infring-
ing conduct.” Id. at 14. That is not the problem pre-
sented. Liability for inducement is established by statute.
The problem before the court is not whether an inducer,
properly defined, is liable for infringement; the problem is
whether a method patent is infringed when more than one
entity performs the claimed steps of the method. Until
the BMC line of cases held that the answer is “no” unless
there is an agency or contractual relationship among all of
the performing entities, this question was resolved by
application of the existing laws of infringement, whether
direct, induced, or contributory infringement.
In accordance with §271(c) the entity that provides
the system that is used to perform the claimed method, or
steps thereof, for which there is no substantial non-
infringing use, is liable for contributory infringement—it
is noteworthy that the court’s opinion does not distinguish
between induced and contributory infringement, misciting
precedent accordingly. The rules of contributory in-
fringement, in which the court seeks support for its elimi-
nation of liability for direct infringement, were
established to provide liability in situations in which the
contributory infringer knows that “the combination for
which his component was especially designed was both
patented and infringing,” as the Court explained in Aro
Manufacturing Co. v. Convertible Top Replacement Co.,
377 U.S. 476, 488 (1964). In Fromson v. Advance Offset
Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983) this court ruled
that there could be contributory infringement by the

the patented product. §271(e)(2). This special expedient
does not justify this court’s creation of a new law of in-
fringement.
AKAMAI TECH v. LIMELIGHT NETWORKS 20

provider of the printing plate, when the final step of
coating of the plate is performed by the customer.
As summarized in Aro, 377 U.S. at 512, contributory
infringement is “designed for cases where enforcement
against direct infringers is impracticable.” (quotation
omitted). See also Dawson, 448 U.S. at 188 (“This protec-
tion [of contributory infringement] is of particular impor-
tance in situations, like the oil lamp case itself [Wallace v.
Holmes, 29 F. Cas. 74 (No. 17,100) (C.C. Conn. 1871)],
where enforcement against direct infringers would be
difficult, and where the technicalities of patent law make
it relatively easy to profit from another’s invention with-
out risking a charge of direct infringement.”). The court’s
opinion incorrectly treats these cases as “inducement”
cases. Inducement is a different concept, and the new
breadth with which the court infuses the concept is an
unwarranted and unsupported enlargement of the law.
Liability for inducement requires direct infringe-
ment
Precedent establishes the circumstances in which the
purveyor of less than the entire claimed invention can be
liable for infringement. For all forms of indirect in-
fringement liability, it is necessary to establish that the
claimed invention is directly infringed. My colleagues
hedge, and while acknowledging that “there can be no
indirect infringement without direct infringement,” maj.
op. 15, the court holds that there need not be direct in-
fringers. I need not belabor the quandary of how there
can be direct infringement but no direct infringers.
Judge Rich, in Hewlett-Packard Co. v. Bausch &
Lomb, Inc., 909 F.2d 1464, 1469 (Fed. Cir. 1990), ex-
plained that under common law “[contributory infringe-
ment] liability was under a theory of joint tortfeasence,
wherein one who intentionally caused, or aided and
21 AKAMAI TECH v. LIMELIGHT NETWORKS

abetted, the commission of a tort by another was jointly
and severally liable with the primary tortfeasor.” The
requirement of a “primary tortfeasor” applies to induce-
ment, as has long been understood: “Liability under 35
U.S.C. 271(b) requires the existence of direct infringement
by another party which is actionable under 35 U.S.C.
271(a).” C. Miller, Some Views on the Law of Patent
Infringement by Inducement, 53 J. Pat. Off. Soc’y 86, 102
(1971). I take note of the majority’s statement that an
inducer is not liable for inducing “others to engage in
conduct that is not within the claims of the patent in
suit.” Maj. op. 22–23 n.4 (citing Shuttlesworth v. City of
Birmingham, 373 U.S. 262 (1963)). That statement is
incomplete, for when the direct infringer is not liable, for
whatever reason, the performance of claim steps is not
prohibited by law. When the performance of the claim
steps is not unlawful, the inducer cannot be liable for
inducing infringement, on any theory of tort or criminal or
patent law. See Shuttlesworth, 373 U.S. at 265 (“It is
generally recognized that there can be no conviction for
aiding and abetting someone to do an innocent act.”).
Precedent routinely reflects that liability for induce-
ment depends on liability for direct infringement. In Met–
Coil Systems Corp. v. Korners Unlimited, Inc., 803 F.2d
684, 687 (Fed. Cir. 1986) the court held that there was no
liability for induced infringement by sale of equipment for
use in the patentee’s machine, because the “customers
enjoyed an implied license to practice the inventions
claimed.” That is, although the customers “practice[d]”
the claimed invention, maj. op. 16, they did not directly
infringe, so there could be no inducement of infringement.
Cf. Giese v. Pierce Chem. Co., 29 F. Supp. 2d 33, 36 (D.
Mass. 1998) (“If the end users are not infringers due to
the protection of the experimental use doctrine, then the
AKAMAI TECH v. LIMELIGHT NETWORKS 22

defendants Vector and Pierce cannot be liable for con-
tributory infringement or inducement.”).
In NTP, Inc. v. Research in Motion, Ltd., 418 F.3d
1282, 1318 (Fed. Cir. 2005) the court held that there was
no liability for inducement by sale of a system that had a
component located in Canada, because the customers did
not perform all the steps of the claimed method in the
United States. That is, although “all the steps of a
claimed method [were] performed,” maj. op. 10, the cus-
tomers did not directly infringe, so there could be no
inducement. Cf. Everpure, Inc. v. Cuno, Inc., 875 F.2d
300, 302 (Fed. Cir. 1989) (“[T]here can be neither con-
tributory nor induced infringement when, because of the
permissible repair doctrine, there has been no direct
infringement.”).
In National Presto Industries, Inc. v. West Bend Co.,
76 F.3d 1185 (Fed. Cir. 1996) the court held that there
was no liability for inducing infringement before the
patent issued, because there is no direct infringement
before issuance. The court stated that “if the thing that
was abetted was not illegal at the time of abetment, but
depended on some future event that might not occur (such
as issuance of the patent) liability can not be retroactively
imposed.” Id. at 1196; cf. Joy Techs., 6 F.3d at 775 (“If the
plant sold by Flakt cannot be used by the purchaser to
infringe directly because it will not be operational within
the term of the patent, Flakt cannot be guilty on a theory
of contributory infringement with respect to that plate.”).
Discarding precedent, the majority holds that there is
liability for inducement when the inducer breaches the
“duty not to cause the acts that constitute infringement
even if the parties who cause the direct injury are not
liable.” Maj. op. 25. Duty, breach, and causation apply in
the tort of negligence, not patent infringement. Prosser &
23 AKAMAI TECH v. LIMELIGHT NETWORKS

Keeton explain that “in negligence cases, the duty is
always the same—to conform to the legal standard of
reasonable conduct in the light of the apparent risk.”
Prosser & Keeton on the Law of Torts, §53, at 356 (5th ed.
1984). In addition to its incorrect treatment of the foun-
dational requirement of direct infringement, the majority
creates a new, ill defined, and open-ended theory of liabil-
ity for patent infringement, simply by “caus[ing], urg[ing],
encourag[ing], or aid[ing]” someone to perform separate
steps of a patented method. Maj. op. 15.
To support its unprecedented ruling of induced in-
fringement without direct infringers, the court also mis-
construes the 1952 Patent Act and its history. In 1948
then attorney Giles S. Rich testified that “obvious in-
fringement” should be subject to remedy, and that judicial
decisions “appear to make it impossible to enforce [combi-
nation] patents in the usual case.” Contributory In-
fringement in Patents: Hearings Before the Subcomm. on
Patents, Trade-Marks, and Copyrights of the House
Comm. on the Judiciary, 80th Cong. 5 (1948) (statement
of G.S. Rich on behalf of the New York Patent Law Asso-
ciation) (“1948 Hearings”). Mr. Rich gave an example of
two equal participants in a radio system, sending and
receiving, and described: “there is no direct infringer of
the patent but only two contributory infringers.” Id. The
court today places great weight on this statement. How-
ever, a year later Mr. Rich testified again, stating that:
“The law always has been that, to hold anyone for con-
tributory infringement, there must have been somewhere
a direct infringement which was contributed to.” Con-
tributory Infringement: Hearings on H.R. 3866 Before
Subcomm. No. 4 of the House Comm. on the Judiciary,
81st Cong. 67 (1949) (statement of G.S. Rich) (“1949
Hearings”); id. at 5 (“Somewhere along the line there
must be a direct infringement . . . .”).
AKAMAI TECH v. LIMELIGHT NETWORKS 24

In the 1951 hearings Mr. Rich again testified, stating
that “wherever there is contributory infringement there is
somewhere something called direct infringement, and to
that direct infringement someone has contributed.”
Patent Law Codification and Revision: Hearings on H.R.
3760 Before Subcomm. No. 3 of the House Comm. on the
Judiciary, 82nd Cong. 151 (1951) (statement of G.S. Rich).
Mr. Rich never proposed the conditions of induced in-
fringement that the court now propounds. Mr. Rich
summarized, when the statute was enacted, that “[a]ctive
inducement implies that there is not a direct infringement
by the one doing the inducing and that the direct in-
fringement was by another.” G.S. Rich, Infringement
Under Section 271 of the Patent Act of 1952, supra at 537.
The court’s opinion quotes other testimony, none of
which proposes or suggests the court’s creative ruling. At
the 1948 hearing Representative Kenneth Keating asked
“[t]he law of torts is the basic part of patent law, is it
not?,” and Mr. Rich answered that: “Infringement is
considered to be a tort and contributory infringement is a
specific application to patent law of the law of joint tort
feasor where two people somehow together create an
infringement which neither one of them individually or
independently commits.” 1948 Hearings, at 12. At the
1949 hearing Mr. Rich again explained:
When two people combine and infringe a patent in
some way or other, they are joint tort feasors, and
it so happens that patents are often infringed by
people acting in concert, either specifically or by
implication, where neither one of them is a direct
infringer. The only way you can protect your right
is to proceed against someone who is not a direct
infringer. That person who does something less
than the direct infringement is called a contribu-
tory infringer.
25 AKAMAI TECH v. LIMELIGHT NETWORKS

1949 Hearings, at 3. The statements and testimony for
the 1948 and 1949 hearings, quoted out of context in the
court’s opinion, do not state, or hint, that the proposed
legislation would accommodate indirect infringement
without direct infringers. Nowhere in the entire legisla-
tive effort did any supporter or sponsor of the codification
of indirect infringement in §271(b) and (c) refer to “prac-
ticing” the claimed invention or “the acts necessary to
constitute direct infringement” as liberated from the
requirement of proving direct infringement, as the major-
ity does today. Maj. op. 28, 13.
What about remedies?
According to the court’s new ruling, it appears that
the patentee cannot sue the direct infringers of the pat-
ent, when more than one entity participates in the in-
fringement. The only remedial path is by way of
“inducement.” We are not told how compensation is
measured. The only thing that is clear, is that remedy is
subject to new uncertainties. Since the direct infringers
cannot be liable for infringement, they do not appear to be
subject to the court’s jurisdiction. Perhaps the inducer
can be enjoined—but will that affect the direct infringers?
Since the inducer is liable when he breaches the “duty”
not to induce, is the inducer subject to multiplication of
damages? This return to the “duty to exercise due care to
determine whether or not he is infringing” of Underwater
Devices Inc. v. Morrison–Knudsen Co., Inc., 717 F.2d 1380,
1389 (Fed. Cir. 1983) raises tension with the ruling of the
en banc court in In re Seagate Technology LLC, 497 F.3d
1360 (Fed. Cir. 2007) that overruled the standard of
Underwater Devices.
Nor has the court ascertained the views of the com-
munities affected by this change in law. The many amici
curiae explained how the single-entity rule affects their
AKAMAI TECH v. LIMELIGHT NETWORKS 26

activities; none has had an opportunity to consider the
effect of the inducement-only change now adopted en
banc.
It is not necessary to change the law in order to de-
sign a fair infringement law. The court misconstrues
“strict liability” as requiring that every participant in an
interactive or collaborative method is fully responsible for
the entire harm caused by the infringement. Global–Tech
Appliances, Inc. v. SEB S.A., 563 U.S. ___, 131 S. Ct.
2060, 2065 n.2 (2011), does not so hold. The tort principle
of “strict liability” applies when injury results from inher-
ently hazardous or dangerous activity, not from patent
infringement. Black’s Law Dictionary 998 (9th ed. 2009)
sums up the law:
Liability that does not depend on actual negli-
gence or intent to harm, but that is based on the
breach of an absolute duty to make something
safe. Strict liability most often applies either to
ultrahazardous activities or in products-liability
cases.
Although the term “strict liability” has crept into pat-
entese, it does not have the consequences given by my
colleagues. Proper analysis is illustrated by Blair &
Cotter, who point out the inapplicability to patent in-
fringement. Strict Liability and its Alternatives in Patent
Law, 17 Berkeley Tech. L.J. 799 (2002). For example,
they explain at page 808 that under a true strict liability
standard, damages would be recoverable even before the
accused infringer has “knowledge or notice that the con-
duct infringes.” See 35 U.S.C. §287 (notice requirements).
As stated in Carbice Corp. of America v. American
Patents Development Corp., 283 U.S. 27, 33 (1931), “In-
fringement, whether direct or contributory, is essentially
a tort, and implies invasion of some right of the patentee.”
27 AKAMAI TECH v. LIMELIGHT NETWORKS

When the patent is infringed through the cooperation or
interaction of more than one entity, assessment of remedy
is appropriately allocated in accordance with traditional
tort principles. The Court stated in Burlington Northern
& Santa Fe Railway Co. v. United States, 556 U.S. 599,
614 (2009) that “apportionment is proper when there is a
reasonable basis for determining the contribution of each
cause to a single harm” (quotation omitted). These fun-
damentals apply here, and resolve all of the issues for
which both factions of the court disrupt law and prece-
dent.
Remedy for infringement may be apportioned on such
traditional tort factors as the relative contribution to the
injury to the patentee, the economic benefit received by
the tortfeasor, and the knowledge and culpability of the
actor. Applicable considerations are summarized in the
Restatement of the Law Torts: Apportionment of Liabil-
ity (2000), as follows:
§8. Factors for Assigning Shares of Responsibility
Factors for assigning percentages of responsi-
bility to each person whose legal responsibility
has been established include
(a) the nature of the person’s risk-creating
conduct, including any awareness or indifference
with respect to the risks created by the conduct
and any intent with respect to the harm created
by the conduct; and
(b) the strength of the causal connection be-
tween the person’s risk-creating conduct and the
harm.
Comment c to §8 of the Restatement further elaborates on
the factors for assigning shares of responsibility:
c. Factors in assigning shares of responsibility. . . .
The nature of each person’s risk-creating conduct
AKAMAI TECH v. LIMELIGHT NETWORKS 28

includes such things as how unreasonable the
conduct was under the circumstances, the extent
to which the conduct failed to meet the applicable
legal standard, the circumstances surrounding the
conduct, each person’s abilities and disabilities,
and each person’s awareness, intent, or indiffer-
ence with respect to risks. The comparative
strength of the causal connection between the
conduct and the harm depends on how attenuated
the causal connection is, the timing of each per-
son’s conduct in causing the harm, and a compari-
son of the risks created by the conduct and the
actual harm suffered by the plaintiff.
One or more of these factors may be relevant
for assigning percentages of responsibility, even
though they may not be a necessary element prov-
ing a particular claim or defense. However, these
factors are irrelevant even to apportionment if
there is no causal connection between the refer-
enced conduct and the plaintiff’s injuries. See
Comment b. It should be noted that the mental-
state factors in this Section may be considered for
apportioning responsibility even if they are not
themselves causally connected to the plaintiff’s in-
jury, as long as the risk-creating conduct to which
they refer is causally connected to the injury.
Apportionment of remedy for shared infringement per-
mits consideration of the actual situation, and is particu-
larly suitable in cases of divided infringement. See
Birdsell v. Shaliol, 112 U.S. 485, 488 (1884) (“In the case
of infringement, the liability of infringers arises out of
their own wrongful invasion of his rights.”); Aro, 377 U.S.
at 500 (“[A] contributory infringer is a species of joint-
tortfeasor, who is held liable because he has contributed
29 AKAMAI TECH v. LIMELIGHT NETWORKS

with another to the causing of a single harm to the plain-
tiff.”).
Whether the infringement is direct or indirect, the al-
location of remedy is a case-specific determination. In
Grokster, 545 U.S. at 930 n.9, the Court observed that
“the lines between direct infringement, contributory
infringement and vicarious liability are not clearly
drawn,” quoting Sony, 464 U.S. at 435 n.17. Grokster
accommodates the realities of today’s technology without
departing from the principles of precedent, by identifying
when “it is just to hold one individual accountable for the
actions of another.” Sony, 464 U.S. at 435. When the
several steps of a process claim are performed by more
than one entity, whether the entities operate under
common direction or control, or jointly or independently or
interactively, remedy for infringement is appropriately
allocated based on established criteria of culpability,
benefit, and the like.
The law has always permitted allocation of remedy
when multiple parties are responsible for civil wrongs.
The example in Judge Linn’s dissent at page 28, that the
person who provides the nuts, bolts, or gears that hold
together an infringing machine would be responsible for
full damages for infringement by the machine, does not
pass the chuckle test. I must also remark that according
to the dissenters’ thesis the manufacturer of the infring-
ing machine would not be liable at all unless the purveyor
of the nuts, bolts, or gears is in an agency relationship
with a mastermind.
Although Grokster is mentioned in the majority’s
opinion, it is undercut by the majority’s insistence that
there is no need to establish direct infringement
“[b]ecause the reasoning of our decision today is not
predicated on the doctrine of direct infringement.” Maj.
AKAMAI TECH v. LIMELIGHT NETWORKS 30

op. 13. However, in Grokster it was not disputed that the
users of the defendants’ systems were liable for direct
infringement, and the Court held that the defendants
could be liable for inducing the infringement.
When there is combined participation in direct in-
fringement, there is a fair concern for imposing damages
on minor participants. Law and precedent do not so
require, and experience makes clear that the target is the
deep-pocket commercial participant, not the occasional
customer. For example, in the McKesson case neither the
patient who accesses his medical records, nor the health-
care provider who assembles and provides the records,
was sued. Only the licensor of the system software was
sued, for the injury to the patentee was in the commercial
profit from the license of the software. Neither the single-
entity rule nor the inducement-only rule is needed to
protect the innocent patient who turns on his computer to
access the system containing his medical records.
Potential for abuse
The majority states that “nothing in the text of either
subsection [§271(a) or (b)] suggests that the act of ‘in-
fringement’ required for inducement under section 271(b)
must qualify as an act that would make a person liable as
an infringer under section 271(a),” maj. op. 26–27, and
holds that liability for inducement arises simply on “ad-
vis[ing].” Id. at 14. Now that this untenable theory is the
law of this en banc court, potential for abuse looms large,
for the majority does not require proof of direct infringe-
ment, but holds that the entity that advises or enables or
recommends the divided infringement is fully responsible
for the consequences of the direct infringement.
Many of the amici curiae pointed to ongoing abuses of
the system of patents, and the ensuing disincentive to
innovative commerce. The majority ignores these cau-
31 AKAMAI TECH v. LIMELIGHT NETWORKS

tions, as it creates new potential problems. And while
many innovative industries explained how they may be
affected by possible rulings on divided infringement, not
one of the many amici suspected the inducement-only
theory that is here adopted.
IV
THE TWO CASES ON APPEAL
The majority remands for application of the induce-
ment-only rule to the now-vacated panel decisions of
Akamai and McKesson. In its remand instructions the
majority declines guidance on direct infringement, instead
stating at maj. op. 36: “While we do not hold that Akamai
is entitled to prevail on its theory of direct infringement,
the evidence could support a judgment in its favor on a
theory of induced infringement.” The panels had held
that without direct infringement there cannot be induced
infringement. That simple rule was confirmed over and
over at the hearings leading to the 1952 Patent Act, for
the legislative history plainly states the understanding
that there must be direct infringement before there can be
liability for inducement to infringe.
Brief review of the facts of the cases on appeal demon-
strates that these cases are readily decided under the
present law, with no need for creative revision of history.
Akamai Technologies, Inc. v. Limelight Networks,
Inc., Appeal No. 2009-1372, -1380, -1416, -1417
The district court in Akamai held a full trial, on jury
instructions that included the single-entity rule as estab-
lished in BMC Resources. The jury found infringement,
the district court granted JMOL after Muniauction was
decided, and a panel of this court affirmed that there
could be no infringement, based on failure to meet the
AKAMAI TECH v. LIMELIGHT NETWORKS 32

single-entity rule. The court today holds that there can be
liability, but only for inducement.
The patent at issue, assigned to the Massachusetts
Institute of Technology and licensed to Akamai, is entitled
“Global Hosting System,” a system for providing content
delivery of website information. In brief, the text of a web
page is stored on and served from the content provider’s
server, and other content such as images, video, and
sound, called embedded objects, are stored on the hosting
servers of a content delivery network. The defendant
Limelight Networks provides such a content delivery
system. Claims 19 and 34 of U.S. Patent No. 6,108,703
are representative of the claims asserted at trial, with
Limelight providing the service but with the customer
conducting the step of tagging of embedded objects (the
boldface step):
19. 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 con-
tent provider domain, tagging the embedded
objects of the page so that requests for the page
objects resolve to the domain instead of the con-
tent provider domain;
responsive to a request for the given page re-
ceived 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 do-
main instead of from the content provider domain.
34. A content delivery method, comprising:
distributing a set of page objects across a net-
work of content servers managed by a domain
33 AKAMAI TECH v. LIMELIGHT NETWORKS

other than a content provider domain, wherein
the network of content servers are organized into
a set of regions;
for a given page normally served from the con-
tent provider domain, tagging at least some of
the embedded objects of the page so that re-
quests for the objects resolve to the domain in-
stead of the content provider domain;
in response to a client request for an embed-
ded object of the page:
resolving the client request as a function of a
location of the client machine making the request
and current Internet traffic conditions to identify
a given region; and
returning to the client an IP address of a
given one of the content servers within the given
region that is likely to host the embedded object
and that is not overloaded.
The single-entity issue turned on the tagging step per-
formed by the customer. Akamai pursued the charge of
direct infringement, recognizing precedent and thus
arguing that the single-entity rule is satisfied because the
customer tags the embedded objects in accordance with
instructions provided by Limelight, within the context of a
contractual relationship. The issue of “direction or con-
trol” was extensively explored at trial, and the jury was
instructed in accordance with BMC Resources:
If Limelight did not direct and control this ac-
tion, then this substitution cannot be attributed to
Limelight. And Limelight cannot, therefore, in-
fringe. . . .
Again, the first [question] again is whether
this method of getting to the Defendant content
delivery network infringes any claim, and the sec-
ond question, again, is whether the content pro-
AKAMAI TECH v. LIMELIGHT NETWORKS 34

vider acted under the direction and control of
Limelight. And again, if Limelight directed and
controlled this action, it was effectively the action
of Limelight, and then it may be found responsi-
ble. But if Limelight did not direct and control,
both are necessary, the modification at the con-
tent provider, then it cannot be deemed to in-
fringe.
...
So, you should review the evidence, decide
how the Limelight systems work, how does the in-
teraction with the content provider work, and,
specifically, does Limelight direct and control the
modifications or does the content provider carry
out these tasks entirely independently. Then
compare each of the mechanisms with what is
claimed in the certain claims and, specifically,
does either of the Defendant’s content delivery
methods practice each element of whichever claim
you are considering.
Trial Tr. 20:20 to 22:4 (Feb. 28, 2008), J.A. 818–19. The
district court further instructed the jury, after discussion
with counsel, that “[i]t is either direct or control, control
or direct; it doesn’t have to be both.” Id. at 53:3–5, J.A.
826.
The jury found that Limelight infringed the claims.
Limelight moved for judgment as a matter of law, and the
district court denied the motion, explaining that “unlike
in BMC Resources, here there was evidence that not only
was there a contractual relationship between Limelight
and its customers, but that it provided those customers
with instructions explaining how to utilize its content
delivery service.” Akamai Techs., Inc. v. Limelight Net-
works, Inc., 614 F. Supp. 2d 90, 119 (D. Mass. 2009).
35 AKAMAI TECH v. LIMELIGHT NETWORKS

Two weeks later this court decided Muniauction, and
the district court received Limelight’s request for recon-
sideration on the ground that Muniauction established
the additional requirement that direct infringement
“requires a showing that the accused direct infringer is
vicariously liable for the acts committed by any others
required to complete performance of the claimed method,”
a more rigorous standard than had been presented to the
jury based on BMC Resources. Dkt. No. 377, at 2 (July 25,
2008). The district court found that there was “no mate-
rial difference between Limelight’s interaction with its
customers and that of Thompson [sic] in Muniauction.”
Akamai, 614 F. Supp. 2d at 122. The district court held
that on the law established in Muniauction, the jury
verdict of infringement could not be sustained.
The majority now remands for application of its in-
ducement-only rule. However, on the jury instruction
that was given, the majority’s criteria for infringement
are met. And this endless litigation is further prolonged,
for the majority gives no appellate review to the other
issues on appeal, including claim construction, the meas-
ure of damages, and other decisions of the district court
presented for appellate review. They are ignored.
McKesson Technologies Inc. v. Epic Systems Corp.,
Appeal No. 2010-1291
McKesson’s action was for inducement of infringe-
ment by Epic Systems, who licenses a software system
that is designed for interactive use by healthcare provid-
ers and their patients. The patent, entitled “Electronic
Provider—Patient Interface System,” is for “a communica-
tion system for providing automated, electronic communi-
cations between at least one health-care provider and a
plurality of users of the health-care provider.” U.S.
Patent No. 6,757,898, abstract. The patent states that
AKAMAI TECH v. LIMELIGHT NETWORKS 36

“once the patient has logged into his/her own Web page,”
the patient can access a variety of healthcare records and
services including “appointment requests and updates,
prescription refills, online triage, health search informa-
tion and the like.” Id. at col.4 ll.52–56. Epic has a system
called MyChart, and licenses the system software to
health-care providers.
The district court applied Muniauction, and granted
summary judgment that the patent cannot be directly
infringed, and thus that there cannot be inducement to
infringe. The district court held that because the patient
performs some steps of the claim, direct infringement is
precluded because neither the healthcare provider nor the
provider of the overall system directs or controls the
actions of the patient. Application of the majority’s theory
of inducement could help to clarify today’s rulings, with
their uncertainties and contradictions.
As claimed in the ’898 patent, the patient initiates a
communication as the first step of the method, which
includes interactive steps:
1. A method of automatically and electronically
communicating between at least one health-care
provider and a plurality of users serviced by the
health-care provider, said method comprising the
steps of:
initiating a communication by one of the plu-
rality of users to the provider for information,
wherein the provider has established a preexist-
ing medical record for each user;
enabling communication by transporting the
communication through a provider/patient inter-
face over an electronic communication network to
a Web site which is unique to the provider,
whereupon the communication is automatically
37 AKAMAI TECH v. LIMELIGHT NETWORKS

reformatted and processed or stored on a central
server, said Web site supported by or in communi-
cation with the central server through a provider-
patient interface service center;
electronically comparing content of the com-
munication with mapped content, which has been
previously provided by the provider to the central
server, to formulate a response as a static or dy-
namic object, or a combined static and dynamic
object; and
returning the response to the communication
automatically to the user’s computer, whereupon
the response is read by the user or stored on the
user’s computers
said provider/patient interface providing a
fully automated mechanism for generating a per-
sonalized page or area within the provider’s Web
site for each user serviced by the provider; and
said patient-provider interface service center
for dynamically assembling and delivering custom
content to said user.
McKesson charged Epic with inducing infringement of the
’898 patent. Epic argued in defense that in accordance
with BMC Resources the claims cannot be directly in-
fringed because no single entity performs or directs or
controls every step of the claimed method. McKesson
responded that the requirements of BMC Resources are
met, in that the healthcare provider controls the patient’s
access to the MyChart system, for the healthcare provider
requires the user to accept a “cookie” in order to use the
system and the system requires login information to
restrict the user’s access to information.
The district court at first denied summary judgment,
finding genuine issues of material fact as to the question
of direction or control. This court then decided Muniauc-
AKAMAI TECH v. LIMELIGHT NETWORKS 38

tion, and the district court concluded that summary
judgment of noninfringement was “compel[ed].” McKes-
son, 2009 WL 2915778, at *5. The district court drew
analogy to the facts and result in Muniauction to conclude
that there could not be direct infringement as a matter of
law. The majority is silent on the provisions embodied in
Muniauction, although the district court held them to be
controlling.
CONCLUSION
The issues that were presented for en banc review can
be simply resolved on the present law. The court should
acknowledge that an all-purpose single-entity require-
ment is flawed, and restore direct infringement to its
status as occurring when all of the claimed steps are
conducted, whether by a single entity or in interaction or
collaboration. Remedy is then allocated as appropriate to
the particular case, whether for direct or induced or
contributory infringement, in accordance with statute and
the experience of precedent.
The court has fractured into two flawed positions,
each a departure from established precedent, each poorly
suited to the issues and technologies that dominate to-
day’s commerce. Today’s new rule of inducement-only
liability serves no public interest, no innovation need.
The consequences for the technology communities are
uncertainty, disincentive, and new potential for abuse.
 United States Court of Appeals
for the Federal Circuit
__________________________

AKAMAI TECHNOLOGIES, INC.,
Plaintiff-Appellant,
AND

THE MASSACHUSETTS INSTITUTE OF
TECHNOLOGY,
Plaintiff-Appellant,

v.
LIMELIGHT NETWORKS, INC.,
Defendant-Cross Appellant.
__________________________

2009-1372, -1380, -1416, -1417
__________________________

Appeal from the United States District Court for the
District of Massachusetts in Nos. 06-CV-11109 and 06-
CV-11585, Judge Rya W. Zobel.
__________________________

AND

MCKESSON TECHNOLOGIES, INC. (formerly
McKesson Information Solutions, LLC),
Plaintiff-Appellant,

v.
2 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

EPIC SYSTEMS CORPORATION,
Defendant-Appellee.
__________________________

2010-1291
__________________________

Appeal from the United States District Court for the
Northern District of Georgia in No. 06-CV-2965, Judge
Jack T. Camp.
__________________________

LINN, Circuit Judge, dissenting, with whom Circuit
Judges DYK, PROST, and O’MALLEY join.

I. INTRODUCTION

In its opinion today, this court assumes the mantle of
policy maker. It has decided that the plain text of
§§ 271(a) and (b) fails to accord patentees certain ex-
tended rights that a majority of this court’s judges would
prefer that the statute covered. To correct this situation,
the majority effectively rewrites these sections, telling us
that the term “infringement” was not, as was previously
thought, defined by Congress in § 271(a), but instead can
mean different things in different contexts.

The majority’s approach is contrary to both the Patent
Act and to the Supreme Court’s longstanding precedent
that “if there is no direct infringement of a patent there
can be no contributory infringement.” Aro Mfg. Co. v.
Convertible Top Replacement Co., 365 U.S. 336, 341
(1961); Deepsouth Packing Co. v. Laitram Corp., 406 U.S.
518, 526 (1972) (quoting Mercoid Corp. v. Mid-Continent
Co. (Mercoid I), 320 U.S. 661, 677 (1944) (Frankfurter, J.,
dissenting on other grounds); see also Joy Techs., Inc. v.
Flakt, Inc., 6 F.3d 771, 774 (Fed. Cir. 1993) (“Liability for
either active inducement of infringement or for contribu-
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 3
tory infringement is dependent upon the existence of
direct infringement.”); C.R. Bard v. Advanced Cardiovas-
cular Sys., Inc., 911 F.2d 670, 673 (Fed. Cir. 1990) (same).
In 1952, Congress removed joint-actor patent infringe-
ment liability from the discretion of the courts, defining
“infringement” in § 271(a) and expressly defining the only
situations in which a party could be liable for something
less than an infringement in §§ 271(b) and (c)—clearing
away the morass of multi-actor infringement theories that
were the unpredictable creature of common law. Since
that time, Congress has on three occasions made policy
choices to treat certain special circumstances as tanta-
mount to “infringement.” See 35 U.S.C. §§ 271(e)(2), (f),
and (g). In doing so, Congress did not give the courts
blanket authority to take it upon themselves to make
further policy choices or define “infringement.”

The majority opinion is rooted in its conception of
what Congress ought to have done rather than what it
did. It is also an abdication of this court’s obligation to
interpret Congressional policy rather than alter it. When
this court convenes en banc, it frees itself of the obligation
to follow its own prior precedential decisions. But it is
beyond our power to rewrite Congress’s laws. Similarly,
we are obliged to follow the pronouncements of the Su-
preme Court concerning the proper interpretation of those
acts. Rivers v. Roadway Express, Inc., 511 U.S. 298, 312–
313 (1994); Rodriguez de Quijas v. Shearson/Am. Express,
Inc., 490 U.S. 477, 484 (1989).

On this unsound foundation, the majority holds that
in the present appeals there has been predicate “in-
fringement” even though § 271(a)’s requirements are not
satisfied. On that basis, the majority vacates the contrary
judgments of the district courts and remands for further
proceedings concerning liability under § 271(b). In my
view, the plain language of the statute and the unambi-
guous holdings of the Supreme Court militate for adoption
4 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

en banc of the prior decisions of the court in BMC Re-
sources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378-79
(Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp.,
532 F.3d 1318, 1329 (Fed. Cir. 2008), which hold that
liability under § 271(b) requires the existence of an act of
direct infringement under § 271(a), meaning that all steps
of a claimed method be practiced, alone or vicariously, by
a single entity or joint enterprise. For these reasons, I
respectfully dissent.

II. DISCUSSION

A. Direct Infringement Liability is a Sine Qua Non of
Indirect Infringement Liability

The majority essentially skirts the en banc question
in the Akamai case by holding that “[b]ecause the reason-
ing of our decision today is not predicated on the doctrine
of direct infringement, we have no occasion at this time to
revisit any of those principles regarding the law of divided
infringement as it applies to liability for direct infringe-
ment under 35 U.S.C. § 271(a).” Maj. Op. 13. With all
due respect to my colleagues in the majority, the question
of “joint infringement” liability under § 271(a) is essential
to the resolution of these appeals. Divorcing liability
under § 271(a) from liability under § 271(b) is unsup-
ported by the statute, subverts the statutory scheme, and
ignores binding Supreme Court precedent.

1. The Statutory Scheme

Patent infringement is not a creation of common law.
It is a statutorily-defined tort. See 3D Sys., Inc. v. Aaro-
tech Labs., Inc., 160 F.3d 1373, 1379 (Fed. Cir. 1998)
(“[T]he tort of infringement . . . exists solely by virtue of
federal statute.”); N. Am. Philips Corp. v. Am. Vending
Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994). “Defining
the contours of the tort of infringement . . . [thus] entails
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 5
the construction of the federal statute.” 3D Sys., 160 F.3d
at 1379.

35 U.S.C. § 271(a) provides that:

Except as otherwise provided in this title, who-
ever without authority makes, uses, offers to sell,
or sells any patented invention, within the United
States or imports into the United States any pat-
ented invention during the term of the patent
therefor, infringes the patent.

Section 271(a) defines infringement. H.R. Rep. No. 82-
1923, at 9 (1952) (“Section 271, paragraph (a), is a decla-
ration of what constitutes infringement.”) (emphasis
added)). 35 U.S.C. §§ 271(b) and (c), in turn, codify the
doctrines of inducement and contributory infringement
respectively:

(b) Whoever actively induces infringement of a
patent shall be liable as an infringer.

(c) Whoever offers to sell or sells within the
United States or imports into the United States a
component of a patented machine, manufacture,
combination or composition, or a material or ap-
paratus for use in practicing a patented process,
constituting a material part of the invention,
knowing the same to be especially made or espe-
cially adapted for use in an infringement of such
patent, and not a staple article or commodity of
commerce suitable for substantial noninfringing
use, shall be liable as a contributory infringer.

Congress carefully crafted subsections (b) and (c) to
expressly define the only ways in which individuals not
completing an infringing act under § 271(a) could never-
theless be liable, rejecting myriad other possibilities that
existed in the common law at the time, such as, for exam-
6 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

ple, Peerless Equipment Co. v. W.H. Miner, Inc., 93 F.2d
98, 105 (7th Cir. 1938) and Solva Waterproof Glue Co. v.
Perkins Glue Co., 251 F. 64, 73-74 (7th Cir. 1918). In
creating §§ 271(b) and (c), Congress intended to codify
“contributory” infringement liability in a limited manner:

The doctrine of contributory infringement has
been a part of our law for about 80 years. . . .
Considerable doubt and confusion as to the scope
of contributory infringement has resulted from a
number of decisions of the courts in recent years.
The purpose of [section 271] is to codify in statu-
tory form principles of contributory infringement
and at the same time eliminate this doubt and con-
fusion. Paragraph (b) recites in broad terms that
one who aids and abets an infringement is like-
wise an infringer. The principle of contributory
infringement is set forth in . . . paragraph [(c)]
which is concerned with the usual situation in
which contributory infringement arises. [Para-
graph (c)] is much more restricted than many pro-
ponents of contributory infringement believe
should be the case.

H.R. Rep. No. 82-1923, at 9 (1952) (emphasis added).
While subsections (b) and (c) are not mutually exclusive,
they each address a particular type of multi-party con-
duct.

Reading subsection (b) in light of subsection (a) is a
straightforward exercise. Section 271(a) defines in-
fringement, and, in turn, §§ 271(b) and (c) establish
indirect infringement liability for one who “actively in-
duces infringement” or sells a component part “especially
adapted for use in an infringement” (emphases added). A
person who practices the entire invention is an infringer,
liable under subsection (a); a person who actively induces
such practice is an inducer, liable under subsection (b)
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 7
(“positive articulation”). The negative inference is equally
straightforward: A person who does not practice the entire
invention is not liable under subsection (a); a person who
actively induces such partial practice is not liable under
subsection (b) (“negative articulation”). Such has been
the consistent reasoning of this court (and of the Supreme
Court, see infra) for years. Joy Techs., 6 F.3d at 774
(citing Supreme Court and Federal Circuit precedent).

The majority rejects this reasoning. It is satisfied
with the positive articulation but not the negative articu-
lation because the latter means that some claims (e.g., the
claims on appeal) are unenforceable in the absence of a
direct infringer. The majority attempts to avoid the
result of some patentees having technically valid but
valueless claims by essentially rewriting subsection (b) so
that it reads: “Whoever actively induces infringement of
[or induces two or more separate parties to take actions
that, had they been performed by one person, would in-
fringe] a patent shall be liable as an infringer.”

2. It is Impermissible to Redefine “Infringement” for the
Purposes of Establishing Liability Under § 271(b)

To support its tenuous position, the majority imper-
missibly bends the statute to define direct infringement
differently for the purposes of establishing liability under
§§ 271(a) and (b). The majority asserts that “[s]ection
271(a) does not define the term ‘infringement.’ Instead, it
simply sets forth a type of conduct that qualifies as in-
fringing.” Maj. Op. 26. Contrary to the majority’s state-
ment, however, both the House and Senate reports from
the statute’s adoption confirm that § 271(a) is, in fact, “a
declaration of what constitutes infringement in the present
statute.” S. Rep. No. 82-1979, at 8 (1952) (emphasis
added); accord H.R. Rep. No. 82-1923, at 9 (1952). In Aro,
the Supreme Court unequivocally stated the same: “And
§ 271(a) of the new Patent Code, which defines ‘infringe-
8 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

ment,’ left in tact the entire body of case law on direct
infringement.” 365 U.S. at 342 (emphasis added).

The idea of defining infringement separately in the
context of §§ 271(a) and (b) is simply unsupported by the
text itself. See 35 U.S.C. §§ 271(a) and (b). The majority
essentially asserts that the word “infringement” in
§ 271(b)—and presumptively § 271(c) as well—can be
defined however this court wants without reference to any
statutory provision. Such a bold move from settled prin-
ciples is unsupported and unwarranted. Congress is
presumed to have intended the word “infringement” in
§§ 271(b) and (c) to target the same conduct as “infringes”
in § 271(a); it is the same word, simply used as a verb in
paragraph (a) to define the act. See Taniguchi v. Kan Pac.
Saipan, Ltd., 132 S. Ct. 1997, 2004-05 (2012) (“[I]t is a
normal rule of statutory construction that identical words
used in different parts of the same act are intended to
have the same meaning.”) (internal quotations omitted));
Hall v. United States, 132 S. Ct. 1882, 1891 (2012) (“At
bottom, identical words and phrases within the same
statute should normally be given the same meaning. . . .
Absent any indication that Congress intended a conflict
between two closely related chapters, we decline to create
one.” (internal quotation omitted)). As the Supreme
Court has held, when the relevant language “was inserted
into [the statutory provisions] at the same time,” as is the
case with §§ 271(a)-(c), “[t]hat maxim is doubly appropri-
ate.” Powerex Corp. v. Reliant Energy Servs., Inc., 551
U.S. 224, 232 (2007) (emphasis added). “The interrela-
tionship and close proximity of these provisions of the
statute presents a classic case for application of the
normal rule of statutory construction that identical words
used in different parts of the same act are intended to
have the same meaning.” Comm’r v. Lundy, 516 U.S. 235,
250 (1996) (internal quotations omitted).
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 9
The limited doctrines of indirect infringement are ex-
plicitly premised on an underlying “infringement.” See 35
U.S.C. §§ 271(a)-(c); Aro, 365 U.S. at 341. The Supreme
Court has expressly rejected interpreting the 1952 Act to
divorce indirect infringement from direct infringement.
In Aro, the Supreme Court unequivocally held: “[I]t is
settled that if there is no direct infringement of a patent
there can be no contributory infringement.” Aro, 365 U.S.
at 341. The majority argues that Aro does not stand for
the proposition that “liability for inducement requires
that a single party be liable for direct infringement”
because the issue in Aro was limited to whether there was
any underlying act of direct infringement based on the
defense of permissible repair. Maj. Op. 30-31. The major-
ity’s attempt to distance Aro from this case is unconvinc-
ing. There is no indication in the Supreme Court’s
statement in Aro that it was intended to have such a
limited meaning. The question of whether or not there
was liability for an underlying act of direct infringement
was squarely at issue in Aro, and the Court held that
without “direct infringement under § 271(a),” i.e., liabil-
ity, there can be no indirect infringement. 365 U.S. at 341
(“[Defendant’s] manufacture and sale [of a component
part] with . . . knowledge might well constitute contribu-
tory infringement under § 271(c), if, but only if, such a
replacement by the purchaser himself would in itself
constitute a direct infringement under § 271(a).” (empha-
sis added)). Not being liable under § 271(a) based on the
doctrine of permissible repair is indistinguishable from
not being liable under § 271(a) based on the fact that no
one has made, used, offered for sale, or sold the patented
invention, i.e., no one has performed a complete act of
direct infringement. In Aro, the Supreme Court meant
exactly what it said: “‘In a word, if there is no infringe-
ment of a patent there can be no contributory infringer,’
. . . and . . . ‘if the purchaser and user could not be
amerced as an infringer certainly one who sold to him . . .
cannot be amerced for contributing to a non-existent
10 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

infringement.’” Id. (quoting Mercoid I, 320 U.S. at 674,
677). The word “amerced” is directly tied to liability. The
Supreme Court was not just talking about underlying
conduct, but liability. Unless someone is liable as a direct
infringer, no one is liable for indirect infringement.

The majority cites portions of congressional testimony
by Giles S. Rich (later “Judge Rich”) to support its inter-
pretation of the statute. But Judge Rich’s testimony is
inconclusive and raises as many questions as it answers.
First, it is not at all apparent that the statement relied on
by the majority at pages 19-20 of its opinion is actually
directed to inducement and not contributory infringe-
ment. As the majority itself recognizes, “[p]rior to the
1952 Act, inducement and contributory infringement were
both referred to under the rubric of contributory in-
fringement.” Maj. Op. 17 (citing Giles S. Rich, Infringe-
ment Under Section 271, 21 Geo. Wash. L. Rev. 521, 537
(1953)). Moreover, Judge Rich later took a seemingly
different position before Congress at the 1951 hearings,
stating: “I should state at the outset that wherever there
is contributory infringement there is somewhere some-
thing called direct infringement, and to that direct in-
fringement someone has contributed. It is a very different
thing from a concept like contributory negligence.” Aro,
365 U.S. at 347 n.1 (quoting Hearings before Subcomm. of
House Judiciary Comm. On H.R. 3760, 82d Cong. 151
(1951).

However the testimony may be read, the Supreme
Court has repeatedly admonished that Congressional
hearing testimony, not from a member of Congress, is not
entitled to any weight or significance in statutory inter-
pretation. See, e.g., Kelly v. Robinson, 479 U.S. 36, 51
n.13 (1986) (Even when “comments in the hearings . . .
may suggest that the language bears the interpretation
[in question b]ut none of those statements was made by a
Member of Congress, nor were they included in the official
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 11
Senate and House Reports[, w]e decline to accord any
significance to these statements.”); McCaughn v. Hershey
Chocolate Co., 283 U.S. 488, 493 (1931) (The same princi-
ple applies to “statements . . . made to committees of
Congress or in discussions on the floor of the Senate by
senators who were not in charge of the bill.”). “For rea-
sons which need not be restated, such individual expres-
sions are with out weight in the interpretation of a
statute.” McCaughn, 283 U.S. at 494 (citations omitted).
With the upmost respect for Judge Rich, his testimony at
the Congressional hearings does not and cannot justify
extending by judicial fiat the scope of § 271 beyond the
words chosen by Congress to reflect its intent.

Under the majority’s approach, if two or more parties
independently practice the elements of a claim, an act of
“infringement” to support a charge of induced infringe-
ment under § 271(b) has occurred. See Maj. Op. 16-17.
The problem with that approach is that there is no statu-
tory basis for concluding that such independent acts
constitute infringement and no basis for asserting a cause
of action for infringement against any of those independ-
ent parties. This runs directly afoul of 35 U.S.C. § 281,
which provides that when there is an “infringement,” “[a]
patentee shall have remedy by civil action . . . .” § 281
(emphasis added). As the majority points out, “[s]ection
281 . . . was designed to serve as a ‘preamble’ for the
sections on remedies and to ensure that an action for
infringement (a ‘civil action’) would be triable to a jury.”
Maj. Op. 27 (citing H.R. Rep. No. 82-1923, at 10, 29 (1952)
(“[T]he modern term civil action is used, [so] there would
be, of course, a right to a jury trial.”). While the majority
looks to the legislative history as evincing that § 281 does
“not declare that any practicing of a patented invention
necessarily brought with it the right of the patent owner
to recover in a civil action for infringement,” Maj. Op. 28
(emphasis added), whether there is a recovery or not is
beside the point. The fact remains that, under § 281,
12 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

where patent “infringement” exists, a patentee has a right
to plead a cause of action in civil court, i.e., the patentee
has a right not to have his claim dismissed under Fed.
Rule of Civ. P. 12(b)(6) for “failure to state a claim upon
which relief can be granted” (emphasis added).

The Majority’s reliance on Fromson v. Advance Offset
Plate, Inc., 720 F.2d 1565, 1567 (Fed. Cir. 1983), is mis-
placed and misleading. First, Fromson merely vacates an
incorrect claim construction. Id. at 1571. Contrary to the
majority’s reading, there was no holding in Fromson that
a party could contributorily infringe a method claim by
performing some but not all of the steps thereof. Second,
Fromson never identified the claims that were potentially
contributorily infringed. As the Majority notes, the case
involved both product and process claims. Maj. Op. 34.
A product claim is directly infringed by making the prod-
uct. Thus, the statement in Fromson can be read to relate
only to the product claims. Third, in the sentences imme-
diately after the portion quoted by the Majority, the court
in Fromson explained that even though some products
were not completed by the accused infringer (but by the
customer), other products were. Thus, the claim construc-
tion issue actually decided in that case did not depend on
the resolution of the doctrinal question at issue here.
Finally, Fromson contains no doctrinal analysis on this
issue. Rather it contains little more than a recitation of
hornbook law in explaining the background of the appeal.

Broadening the doctrine of inducement, such that no
predicate act of direct infringement is required, is a
sweeping change to the nation’s patent policy that is not
for this court to make. See Mayo Collaborative Servs. v.
Prometheus, 132 S. Ct. 1289, 1305 (2012) (“[W]e must
hesitate before departing from established general legal
rules lest a new protective rule that seems to suit the
needs of one field produce unforeseen results in another.
And we must recognize the role of Congress in crafting
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 13
more finely tailored rules where necessary.”). This is not
a case where Congress has given us a statute of unclear
meaning and it falls to the court to interpret the statute.
This is the opposite case, where the meaning of Congress’s
enactments is clear. That a majority of this court dislikes
the policy that results from the statute as Congress wrote
it is not a valid foundation for the action taken today. See
id. (declining to determine “whether, from a policy per-
spective, increased protection for discoveries of diagnostic
laws of nature is desirable”).

3. Congress’s Addition of §§ 271(e)(2), (f), and (g) Exem-
plify that Defining Infringement is not the Province of
This Court

The majority points to the more recent additions of 35
U.S.C. §§ 271(e)(2), (f), and (g) as evidence that “the
statute uses the term ‘infringement’ in a way that is not
limited to the circumstances that give rise to liability
under section 271(a).” Maj. Op. 27. From this, the major-
ity justifies its new definition of “infringement” under
§ 271(b). Maj. Op. 16 (defining “infringement” for the
purposes of inducement liability as “acts that collectively
practice the steps of the patented method”). But these
newer additions do not support the majority; indeed they
contradict it. Section 271(b) does not define infringement
at all. Section 271(a) does. Aro, 365 U.S. at 342. Section
271(b) was added with knowledge of the definition of
infringement in § 271(a). See id.

Congress enacted §§ 271(e) and (f) in 1984 and
§ 271(g) in 1987 to satisfy specific policy goals. The fact
that §§ 271(e), (f), and (g) identify acts not falling under
§ 271(a) that are to be treated as infringement confirms
that, when Congress intended to cover acts not encom-
passed within the traditional definition of infringement, it
knew how to create an alternative definition thereof. For
example, Congress enacted § 271(e)(2) to create “an act of
14 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

patent infringement [when a party] submit[s] an ANDA
for a drug (1) which is claimed in a valid product patent,
or (2) a use of which is claimed in a valid use patent . . . .”
H.R. Rep. No. 98-857, at 26 (1984). Section 271(e)(2), is “a
highly artificial act of infringement,” Eli Lilly & Co. v.
Medtronic, Inc., 496 U.S. 661, 678 (1990), which Congress
created to satisfy “a very limited and technical purpose
that relates only to certain drug applications,” id. at 676.
Similarly, Congress enacted § 271(f) to create “an [act of]
infringement [when an entity] suppl[ies] components of a
patented invention . . . that are to be combined outside the
United States.” H.R. Rep. No. 1984 U.S.C.C.A.N. 5827,
5828 (emphasis added). In passing that section, Congress
responded to the Supreme Court’s decision in Deepsouth
Packing Co. v. Laitram Corp., 406 U.S. 518 (1972), inter-
preting § 271(a) to exclude such extraterritorial acts. This
was “a legislative solution to close a loophole in patent
law.” H.R. Rep. No. 1984 U.S.C.C.A.N. 5827, 5828 (em-
phasis added); see also S. Rep. No. 98-663, at 3 (1984)
(explaining the policy goal of preventing entities from
“circumvent[ing] a patent” by supplying components for
assembly abroad). Finally, Congress enacted § 271(g) to
create an act of infringement when an entity “without
authority imports in the United States or sells or uses
within the United States a product which is made by a
process patented in the United States.” S. Rep. No. 100-
83, at 48 (1987). The House Report explains that “[t]here
[wa]s no policy justification for encouraging such overseas
production and concurrent violation of United States
intellectual property rights. The courts cannot solve this
defect. The Congress can. The compelling nature of this
policy deficiency has been evident to leaders in both the
legislative and executive branches.” H.R. Rep. No. 100-60,
at 6 (1987) (emphasis added).

Congress knows how to create alternative forms of in-
fringement. Congress, however, apparently does not take
issue with this court’s interpretation of §§ 271(a), (b), and
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 15
(c) in BMC and Muniauction. If it did, Congress recently
had the chance to amend the statute in the Leahy-Smith
America Invents Act, Pub. L. No. 112-29, 125 Stat. 284
(2011), signed into law on September 16, 2011. The fact
that Congress was aware of BMC and Muniauction when
it reformed the 1952 Patent Act indicates that Congress
did not intend to abrogate the single entity rule for direct
infringement, or broaden indirect infringement liability
beyond its intentionally limited scope.

4. The Majority’s Analogies to Criminal and Tort Law are
Flawed

In an attempt to justify its statutory revision, the ma-
jority overstates and improperly analogizes to fundamen-
tal principles of criminal and tort law. The majority
asserts that 18 U.S.C. § 2 “has been construed to permit
the conviction of an accessory who induces or causes a
criminal offense even when the principal is found not
liable for the unlawful conduct.” Maj. Op. 22 (citing
Standefer v. United States, 447 U.S. 10, 19 (1980). This
proposition is unremarkable, however, as illustrated by
Standefer. In Standefer, while the principal was acquit-
ted on the relevant charges in a separate trial, the Su-
preme Court found that, in the trial at bar, the “petitioner
received a fair trial at which the Government . . . prov[ed]
beyond reasonable doubt that [the principal] violated [the
statute] and that petitioner aided and abetted him in that
venture.” 447 U.S. at 26. The Supreme Court held: “In
denying preclusive effect to the [principal’s] acquittal [in
the previous trial], . . . [t]his case does no more than
manifest the simple, if discomforting reality that different
juries may reach different results under any criminal
statute.” Id. at 25 (internal quotations omitted). In
Standefer, the Supreme Court required proof of the under-
lying statutory violation, the Government met its burden
to prove the underlying statutory violation in the case at
16 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

bar, and thus the case does not stand for the broad propo-
sition that the majority has quoted it for.

Moreover, the Majority’s statutory analogy to 18
U.S.C. § 2 is facially incorrect. Each of the cases upon
which the majority relies to assert that “the inducer’s
liability does not turn on whether the intermediary is
factually guilty or even capable of committing the charged
offense,” Maj. Op. 22, was decided under 18 U.S.C. § 2(b),
which imposes liability on a defendant who causes an
“act,” which “would be an offense,” to be done through an
intermediary (who may be innocent). 18 U.S.C. § 2(b)
(“Whoever willfully causes an act to be done which, if
directly performed by him or another would be an offense
against the United States, is punishable as a principal.”);
Maj. Op. 22 (citing United States v. Tobon-Builes, 706
F.2d 1092, 1099 (11th Cir. 1983), United States v. Glea-
son, 616 F.2d 2, 20 (2d Cir. 1979), and United States v.
Rapoport, 545 F.2d 802, 806 (2d Cir. 1976)). The appro-
priate analogy, however, is between 35 U.S.C. § 271(b)
and 18 U.S.C. § 2(a), not § 2(b). Section 2(a) provides that
anyone who “aids, abets, counsels, commands, induces or
procures [the] commission [of a crime], is punishable as a
principal.” Compare with 35 U.S.C. § 271(b) (“Whoever
actively induces infringement of a patent shall be liable as
an infringer.”). In United States v. Concepcion, 983 F.2d
369 (2d Cir. 1992), the second circuit explained:

The requirements of § 2(a) [Federal criminal aid-
ing and abetting or “inducement”], however, are
somewhat different [than § 2(b)]. Whereas § 2(a)
speaks in terms of procuring or aiding and abet-
ting the commission of an “offense,” and hence re-
quires proof that the primary actor had criminal
intent, § 2(b) speaks in terms of causing the actor
to perform only an “act.”
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 17

Id. at 383. When a defendant is charged with aiding and
abetting under § 2(a)—unlike for a defendant who is a
cause in fact of a “would be” offense under § 2(b)—the
guilt of the principal must be proven. Id. at 383-84. “It is
hornbook law that a defendant charged with aiding and
abetting the commission of a crime by another [under
§ 2(a)] cannot be convicted in the absence of proof that the
crime was actually committed” (although the principal
need not be prosecuted or may have been acquitted by a
separate jury in a different trial, been granted immunity
from liability, or pleaded to a lesser offense). United
States v. Ruffin, 613 F.2d 408, 412-13 (2d Cir. 1979)
(holding that “the acquittal of [the principal] by the same
jury which convicted [the appellant] precludes a finding
under 18 U.S.C. § 2(a) that [the appellant] aided and
abetted . . . the alleged crime”); accord Standefer, 447 U.S.
at 25-26 (1980).

Like 18 U.S.C. § 2(a), which requires an actual “of-
fense,” 35 U.S.C. § 271(b) requires an actual “infringe-
ment.” Congress’s specific addition of subsection (b) to 18
U.S.C. § 2 in 1948 to capture situations that did not
qualify as aiding and abetting in the criminal context
discredits the majority’s position that we can reach an
analogous result in the context of inducement under 35
U.S.C. § 271, absent a similar statutory revision by Con-
gress. See Concepcion, 983 F.2d at 383-84 (explaining
that Congress added subsection 2(b) in 1948 to reach
situations where the primary actor did not “have . . . the
‘essential criminal intent’” to “secure a conviction on a
theory of aiding and abetting in violation of subsection
(a)” (citations omitted)). The majority does not even
attempt to explain its reliance on 18 U.S.C. § 2(b) despite
the fact that the operative language of 18 U.S.C. § 2(b)—
“would be an offense”—is not found in 35 U.S.C. § 271(b).
If Congress wished for inducement under 35 U.S.C.
§ 271(b) to reach the inducement of acts that “would be”
18 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

an infringement, Congress would have had to use similar
language to that in 18 U.S.C. § 2(b), such as it did in 35
U.S.C. § 271(f), which says “would infringe.” The major-
ity’s “liability-free direct infringement to support induce-
ment” theory is, thus, contrary to the “generally
recognized” principle that “there can be no conviction for
aiding and abetting someone to do an innocent act.”
Shuttlesworth v. City of Birmingham, 373 U.S. 262, 265
(1963).

Even if 18 U.S.C. § 2(b) “causation” liability could be
compared to inducement under 35 U.S.C. § 271(b)—which
as explained supra, it cannot—to be liable under § 2(b)
the actor must nevertheless cause “prohibited conduct.”
Ruffin, 613 F.2d at 413; accord Tobon-Builes, 706 F.2d
1092, 1099 (“[I]t is well established that § 2(b) was de-
signed to impose criminal liability on one who causes an
intermediary to commit a criminal act . . . .” (emphasis
added); Gleason, 616 F.2d at 20 (“Under 18 U.S.C. § 2(b) a
person who causes an innocent party to commit an act
which, if done with the requisite intent, would constitute
an offense may be found guilty as a principal . . . .” (em-
phasis added)); Rapoport, 545 F.2d at 806 (same). In
contrast here, the tort of patent infringement is statuto-
rily defined in § 271(a) as the unauthorized “mak[ing],
us[ing], offer[ing] to sell, or sell[ing] any patented inven-
tion.” § 271(a) (emphasis added). Practicing less than all
elements of a claim is not patent infringement under
§ 271(a). Warner-Jenkinson Co. v Hilton Davis Corp., 520
U.S. 17, 40 (1997); Aro, 365 U.S. at 340 (“The patent is for
a combination only. Since none of the separate elements
of the combination is claimed as the invention, none of
them when dealt with separately is protected by the
patent monopoly.” (quoting Mercoid I, 320 U.S. at 667)).
When a person induces one or more entities to perform
acts that do not constitute the statutorily defined act of
patent infringement—i.e., induces some form of partial or
“contributory” action—that person does not induce any
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 19
prohibited conduct under the statute, and thus cannot be
said to aid and abet any prohibited conduct. See Shut-
tlesworth, 373 U.S. at 265.

The majority also errs in stating that “liability for in-
ducement of a tort applies even if the person being in-
duced is unaware that his act is injurious and is not liable
for that reason.” Maj. Op. 24 (emphasis added). The
majority cites the Restatement of Torts (“1st Restate-
ment”) § 876 cmt. b (1938), but that comment merely
states that a defendant may be liable for assisting or
encouraging the tortious conduct of another “whether or
not the other knows his act to be tortious.” The premise
of the 1st Restatement is that an encouraged person is
liable for “tortious conduct.” The 1st Restatement does
not suggest that the “encouraged party” would not be
liable. See 1st Restatement § 876 cmt. b, illus. 4-5. Nor
do the cited cases support the majority’s proposition that
inducement can be based upon liability-free acts. In each
of these cases, the alleged liability is based on the defen-
dant’s breach of a direct duty to the plaintiffs; the cases
are thus direct liability cases—analogous to direct or
vicarious liability situations in the patent law context
under § 271(a)—and are not dependent upon the commis-
sion of a separate statutorily defined tortious act by some
innocent or otherwise immune party. Pelster v. Ray, 987
F.2d 514, 523-24 (8th Cir. 1993) (rejecting a directed
verdict for defendants where defendants allegedly sold the
plaintiff a car knowing that the vendor had rolled back
the odometer); Hoyt v. Clancey, 180 F.2d 152, 158 (8th
Cir. 1950) (not reaching liability, but rather remanding
because “the court’s ruling on evidence were [sic] unrea-
sonably restrictive”); Learjet Corp. v. Spenlinhauer, 901
F.2d 198, 203 (1st Cir. 1990) (plaintiff stated a claim for
fraudulent misrepresentation based on defendant’s inten-
tional false misrepresentations to the FAA); Davis v.
Louisville Trust Co., 181 F. 10, 20 (6th Cir. 1910) (fraudu-
20 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

lent misrepresentation based on false representations to a
publishing agency “with knowledge . . . that their sub-
stance would be published to all who might wish to deal
with the companies . . . .”); Hawkins v. Upjohn Co., 890 F.
Supp. 609, 611 (E.D. Tex. 1994) (plaintiff stated a claim
for conspiracy to commit fraud based on “defendants’
repeated and concerted efforts to manufacture and with-
hold evidence regarding the drugs at issue from the Food
and Drug Administration”); Graham v. Ellmore, 26 P.2d
696, 697 (Cal. App. 1933) (salesman not liable for fraudu-
lent inducement of a real estate transaction where he
made a false statement to purchasers which he “believed
. . . to have been true” based on the landowner’s misrepre-
sentation; and not addressing the liability of the land-
owner on appeal); Moyer v. Lederer, 50 Ill. App. 94, 94-96
(Ill. App. Ct. 1893) (upholding a jury instruction that “if a
merchant furnishes to a mercantile agency . . . a willfully
false statement . . . with intent to obtain a standing and
credit to which he knows that he is not justly entitled, and
thus to defraud whoever may refer to the agency, . . . his
liability to any party defrauded by these means is the
same as if he had made the false representation directly
to the party injured” (emphasis added)); Kuehl v. Par-
menter, 192 N.W. 429, 431 (Iowa 1923) (affirming a di-
rected verdict for defendants in a fraud case in which the
plaintiff failed to prove damages); Laun v. Union Elec. Co.
of Mo., 350 Mo. 572, 583 (Mo. 1943) (“The perjured wit-
ness and the one who suborns him are joint tortfeasors,
acting in conspiracy or combination to injure the party
defamed. The fact that one of them is protected from a
civil suit by a personal privilege does not exempt the
other joint tortfeasor from such suit.” (quotation omit-
ted)); Midford v. Kann, 32 A.D. 228 (N.Y. App. Div. 1989)
(upholding a trial judge’s charge of false imprisonment
against defendant where the defendant caused police
officers to illegally arrest the plaintiffs on his property;
and not addressing the officers’ liability). As shown, in
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 21

each cited case, although intermediate actors may have
directly caused an injury, the party held liable also was
held to have directly caused an injury.

The 1st Restatement only provides for inducement li-
ability in the presence of an underlying wrongful or
“tortious” act or “breach of duty.” 1st Restatement § 876;
see also Maj. Op. 24. The “tortious conduct” or “breach of
duty” in this case is the act statutorily defined in § 271(a).
There is no tort for inducing an act that is something less
than an infringement, and thus not itself wrongful, tor-
tious, or a breach of duty. See First Restatement § 876.

B. The Single Entity Rule for Direct Infringement Liabil-
ity under § 271(a)

Direct infringement liability requires that one actor
performs each and every element or step of a claim. See
Aro, 365 U.S. at 340 (“The patent is for a combination
only. Since none of the separate elements of the combina-
tion is claimed as the invention, none of them when dealt
with separately is protected by the patent monopoly.”
(quoting Mercoid I, 320 U.S. at 667)). Unlike indirect
infringement under §§ 271(b) and (c), which both require
a certain mens rea, Global-Tech Appliances, Inc. v. SEB
S.A., 131 S. Ct. 2060, 2068 (2011), under § 271(a), direct
infringement is a strict-liability offense, id. at 2065 n.2
(“Direct infringement has long been understood to require
no more than the unauthorized use of a patented inven-
tion. . . . [A] direct infringer’s knowledge or intent is
irrelevant.” (emphasis added)). Because of the strict-
liability nature of direct infringement, this court has
limited direct infringement liability “to those who practice
each and every element of the claimed invention,” BMC,
498 F.3d at 1381, i.e., the “single entity rule.” See Cross
Med. Prods. v. Medtronic Sofamor Danek, 424 F.3d 1293,
1311-12 (Fed. Cir. 2005) (applying the single entity rule).
22 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

The single entity rule, consistent with the statute, pro-
tects an actor who practices less than all elements of a
claim—i.e., does not practice the “patented invention”—
from direct patent infringement liability.

The legislative history supports the single entity rule
for direct infringement. Congress enacted § 271 to clarify
the scope of indirect infringement, and in so doing, “left in
tact the entire body of case law on direct infringement.”
Aro, 365 U.S. at 342. When the Supreme Court held in
Aro that § 271(a) did not change the law of direct in-
fringement, the Court was referring to the single entity,
all elements rule of direct infringement that was “well
settled” in 1952. See Wallace v. Holmes, 29 F. Cas. 74, 80
(C.C. Conn. 1871) (“The rule of law invoked by the defen-
dants is this—that, where a patent is for a combination
merely, it is not infringed by one who uses one or more of
the parts, but not all, to produce the same results . . . .
This rule is well settled, and is not questioned on this
trial.” (emphasis added)).

Today, just as in 1952, where a single entity does not
perform each and every claim limitation, that entity may
not be characterized as or held liable as a direct infringer.
See Aro, 365 U.S. at 340; Cross Med., 424 F.3d at 1311-14
(Fed. Cir. 2005) (holding that there can be no direct
infringement of a product claim where surgeons, and not
the defendant, made the claimed apparatus in the operat-
ing room, and remanding to determine whether the
surgeons directly infringed such that Medtronic could be
held liable for indirect infringement). Contributory
actions—such as the performance of some, but not all,
steps of a method claim—do not meet the all elements
test, and thus must be analyzed exclusively under the
doctrines of indirect infringement. BMC, 498 F.3d at
1381 (“[E]xpanding the rules governing direct infringe-
ment to reach independent conduct of multiple actors
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 23
would subvert the statutory scheme for indirect infringe-
ment.”).

Limelight and many amici argue that the word “who-
ever” in § 271(a) (“whoever . . . uses . . . any patented
invention”) undermines the single entity rule. See 1
U.S.C. § 1 (“In determining the meaning of any Act of
Congress, unless the context indicates otherwise—words
importing the singular include and apply to several
persons, parties, or things . . . .” (emphasis added)). This
argument fails for two reasons. First, if one interprets
“whoever” to include the plural, the statute simply states
the obvious: More than one entity can be independently
liable for direct patent infringement if each entity prac-
tices every element of the claim. Second, the statutory
context, with §§ 271(b) and (c) extending liability to actors
who do not independently infringe in limited, specifically
defined circumstances, indicates that § 271(a) excludes
joint liability. See City of Columbus v. Ours Garage &
Wrecker Serv., Inc., 536 U.S. 424, 445 (2002) (“It is a well-
established principle of statutory construction (and of
common sense) that when . . . ‘two words or expressions
are coupled together, one of which generally includes the
other, it is obvious that the more general term is used in a
meaning excluding the specific one.’” (quoting J. Suther-
land, Statutes and Statutory Construction § 266 p. 349
(1891)).

C. Traditional Principles of Vicarious Liability Still Apply
to § 271(a)

Our “divided infringement” case law is rooted in tradi-
tional principles of vicarious liability. BMC held that,
where the actions of one party can be legally imputed to
another such that a single entity can be said to have
performed each and every element of the claim, that
single entity is liable as a direct infringer. 498 F.3d at
1380-81. Before BMC, the judiciary and the patent law
24 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

community generally recognized that multiple actors
could together infringe a patent only if one somehow
controlled the other(s). See Mobil Oil Corp. v. Filtrol
Corp., 501 F.2d 282, 291-92 (9th Cir. 1974) (“Mobil con-
tends that Filtrol and Texaco split between them the
performance of the four steps of the claim. . . . We ques-
tion whether a method claim can be infringed when two
separate entities perform different operations and neither
has control of the other’s activities. No case in point has
been cited.” (emphasis added)); Mark Lemley et al., Di-
vided Infringement Claims, 33 AIPLA Q.J. 255, 258
(2005) (“[C]ourts have imposed liability for direct in-
fringement where another person acts as an agent of the
alleged infringer.” (emphasis added)). Applying tradi-
tional principles of vicarious liability to direct infringe-
ment under § 271(a) protects patentees from a situation
where a party attempts to “avoid infringement . . . simply
by contracting out steps of a patented process to another
entity. . . . It would be unfair indeed for the mastermind
in such situations to escape liability.” BMC, 498 F.3d at
1381.

BMC’s holding that direct infringement liability un-
der § 271(a)—in the context of joint actors—exists only
where one party was shown to “control or direct each step
of the patented process,” 498 F.3d at 1380, is properly
rooted in the doctrine of vicarious liability. See also
Muniauction, 532 F.3d at 1329. Both tort and agency law
guide BMC’s test. See Restatement (Second) of Torts
§ 877 (1979) (“For harm resulting to a third person from
the tortious conduct of another, one is subject to liability if
he . . . orders or induces the conduct . . . , [or] controls, or
has a duty to use care to control, the conduct of the other
. . . and fails to exercise care in the control . . . .” (empha-
ses added)); Restatement (Third) of Agency § 1.01 (2006)
(“Agency is the fiduciary relationship that arises when
one person (a ‘principal’) manifests assent to another
person (an ‘agent’) that the agent shall act on the princi-
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 25
pal’s behalf and subject to the principal’s control, and the
agent manifests assent or otherwise consents so to act.”);
Restatement (Second) of Torts § 315 (1965) (“There is no
duty so to control to the conduct of a third person as to
prevent him from causing physical harm to another
unless . . . a special relation exists between the actor and
the third person which imposes a duty upon the actor to
control the third person’s conduct . . . .” (emphasis added)).

The vicarious liability test also reaches joint enter-
prises acting together to infringe a patent. The acts of
each participant in a joint enterprise are, by definition,
imputed to every member.

All members of a joint venture may be jointly and
severally liable to third persons for wrongful acts
committed in furtherance of the joint enterprise.
Thus, the negligence of one participant in the en-
terprise or venture, while acting within the scope
of agency created by the enterprise, may be im-
puted to another participant so as to render the
latter liable for the injuries sustained by third
persons as a result of the negligence.

48A C.J.S. Joint Ventures § 60; see also Restatement
(Second) of Torts § 491 (1965) (“Any one of several persons
engaged in a joint enterprise, such as to make each mem-
ber of the group responsible for physical harm to other
persons caused by the negligence of any member, is
barred from recovery against such other persons by the
negligence of any member of the group.”).

A joint enterprise exists for the purposes of imposing
vicarious liability when there is:

(1) an agreement, express or implied, among the
members of the group; (2) a common purpose to be
carried out by the group; (3) a community of pecu-
26 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

niary interest in that purpose, among the mem-
bers; and (4) an equal right to a voice in the direc-
tion of the enterprise, which gives an equal right
of control. Whether these elements exist is fre-
quently a question for the jury, under proper di-
rection from the court.

Restatement (Second) Torts § 491 cmt. c.; see also 57B
Am. Jur. 2d Negligence § 1138. In Golden Hour Data
Sys., Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir.
2010), this court, relying on BMC and Muniauction,
affirmed the district court’s grant of JMOL that there
could be no direct infringement because there was insuffi-
cient evidence of direction or control, id. at 1380-81, even
though the two accused entities “formed a strategic part-
nership, enabled their programs to work together, and
collaborated to sell the two programs as a unit,” id. at
1371. Because the parties in that case would have satis-
fied the test for joint enterprise based on common purpose
and an equal right of mutual control, see id., the en banc
court should expressly overrule the holding in that case.
This case, as well as the other “joint infringement” cases
decided under § 271(a), however, cannot be addressed
under the majority’s analysis, which purports to limit
itself to § 271(b).

The well established doctrine of vicarious liability is
the proper test for establishing direct infringement liabil-
ity in the multi-actor context. Absent direct infringement,
the patentee has not suffered a compensable harm. See,
e.g., BMC, 498 F.3d at 1379. In patent law, unlike in
other areas of tort law—where the victim has no ability to
define the injurious conduct upfront—the patentee spe-
cifically defines the boundaries of his or her exclusive
rights in the claims appended to the patent and provides
notice thereby to the public to permit avoidance of in-
fringement. As this court correctly recognized in BMC,
“[t]he concerns over a party avoiding infringement by
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 27
arms-length cooperation can usually be offset by proper
claim drafting. A patentee can usually structure a claim
to capture infringement by single party.” 498 F.3d at
1381. As many amici have pointed out, the claim drafter
is the least cost avoider of the problem of unenforceable
patents due to joint infringement, and this court is unwise
to overrule decades of precedent in an attempt to enforce
poorly-drafted patents.

Accordingly, I would hold that direct infringement is
required to support infringement under § 271(b) or
§ 271(c) and properly exists only where one party per-
forms each and every claim limitation or is vicariously
liable for the acts of others in completing any steps of a
method claim, such as when one party directs or controls
another in a principal-agent relationship or like contrac-
tual relationship, or participates in a joint enterprise to
practice each and every limitation of the claim.

D. Judge Newman’s Dissent Errs by Resuscitating the
Common Law of Joint Tortfeasor

Judge Newman’s opinion, which would permit joint
actor infringement liability whenever independent parties
collectively infringe a patent, is no more satisfactory as a
matter of either statutory interpretation or legal analysis.
Judge Newman attempts to justify this loose approach to
direct infringement liability under § 271(a) by asserting
that § 271(a) is not a strict liability provision after all,
with the apparent consequence that innocent participants
are in fact not liable. This assertion is fallacious. In
Global-Tech, the Supreme Court held that “[d]irect in-
fringement has long been understood to require no more
than the unauthorized use of a patented invention. . . .
[A] direct infringer’s knowledge or intent is irrelevant.”
131 S. Ct. at 2065 n.2 (emphasis added). The fact that the
statutory tort of infringement has no mental state re-
quirement, actual or constructive, by definition, renders it
28 AKAMAI v. LIMELIGHT & MCKESSON v. EPIC

a strict liability offense. See Black's Law Dictionary 998
(9th ed. 2009) (defining “strict liability” as “[l]iability that
does not depend on actual negligence or intent to harm,
but that is based on the breach of an absolute duty to
make something safe”); XVI Oxford English Dictionary
899 (2d ed. 1989) (defining “strict liability” as “a liability
which does not depend upon intent to commit an offence”).
Judge Newman’s reliance on § 287’s notice provisions for
damages as evidence of a requisite mental state conflates
preconditions of suit with elements of the tort, treating the
marking requirement as tantamount to a “knew or should
have known” element of infringement proper.

Judge Newman’s joint actor liability approach under
§ 271(a) would also disrupt well-settled law with respect
to system and apparatus claims by permitting multi-party
infringement liability in the context of an apparatus or
system claim—an absurd and unworkable result. For
example, if a patentee, P, has an apparatus claim to a
new and improved machine; and parties N, B, and G are
manufactures who make the nuts, bolts, and gears that
comprise the machine; and N, B, and G sell to party A,
who assembles and sells or uses the machine; under
Judge Newman’s test, all are now joint infringers of P’s
patent. Under such an approach, the need for contribu-
tory infringement and inducement, as Congress envi-
sioned, is essentially eviscerated.

III. APPLICATION TO THE CASES ON APPEAL

A. Akamai

In the Akamai case, the asserted claims were drafted
so as to require the activities of both Limelight and its
customers for a finding of infringement. Thus, Akamai
put itself in a position of having to show that the allegedly
infringing activities of Limelight’s customers were attrib-
utable to Limelight. Akamai did not meet this burden
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 29
because it did not show that Limelight’s customers were
acting as agents of or otherwise contractually obligated to
Limelight or that they were acting in a joint enterprise
when performing the tagging and serving steps. Accord-
ingly, I would affirm the district court’s grant of Lime-
light’s motion for JMOL of non-infringement under
§ 271(a).

I would also reinstate the portion of the panel’s opin-
ion addressing Limelight’s alternative ground for affir-
mance and conditional cross-appeal of the damages
award, as well as the portion dealing with the ’645 and
’413 Patents.

B. McKesson

In the McKesson case, the doctor-client relationships
of the MyChart health care providers and their patients
do not by themselves give rise to an agency relationship
or impose on patients a contractual obligation such that
the voluntary actions of the patients can be said to repre-
sent the vicarious actions of their doctors. Nor is there
anything to indicate that the MyChart health care pro-
viders act in any joint enterprise with their patients.
Accordingly, I would affirm the district court’s grant of
Epic’s renewed motion for summary judgment of nonin-
fringement.