Post by John M. Golden
In patent law, networked technologies have brought to the fore difficult questions about liability in situations involving so-called “divided infringement.” In a typical such situation, multiple parties contribute to the exploitation of a patented method, but no party performs all steps of the method. Notably for the purposes of this blog, questions about whether anyone is liable for infringement in such situations have led judges at both the U.S. Supreme Court and the U.S. Court of Appeals for the Federal Circuit to direct attention to common law standards for joint tortfeasor liability. In the end, more straightforward issues of statutory interpretation might dominate concerns about common law principles. Cf. John F. Duffy & Richard Hynes, Statutory Domain and the Commercial Law of Intellectual Property, 102 Va. L. Rev. (forthcoming) (contending that “modern commentators are wrong in asserting that [patent and copyright] exhaustion doctrine evolved from common-law decisionmaking” as opposed to statutory interpretation) . Nonetheless, the current debate highlights the extent to which modern statutory regimes can trigger reference to (and opportunities for academic guidance on) background principles of common law.
On a forward-looking basis, smart claim drafting might address (for substantial fees) many current concerns about divided infringement. In the meantime, however, courts face the prospect of several years of litigation involving already issued patents. This litigation presents a fundamental dilemma. Should the courts understand the scope of patent infringement to permit patentees to prevent or “tax” multi-party activities that arguably lie beyond any clear notice provided by the Patent Act, its legislative history, or judicial precedent? Alternatively, by understanding patent infringement more restrictively, should courts effectively sanction “avoision” behavior that might artificially divide up acts of technological exploitation? Cf. Rebecca Giblin & Jane C. Ginsburg, We (Still) Need to Talk About Aereo: New Controversies and Unresolved Questions After the Supreme Court’s Decision, 38 Colum. J.L. & Arts (forthcoming) (criticizing legal reasoning that makes copyright law outcomes overly sensitive to “technical design” on grounds that such reasoning makes the law “vulnerable to ‘avoision’ … combining aspects of law ‘evasion’ and ‘avoidance’”).
The current focal point in struggles with this dilemma is the case of Akamai Technologies, Inc. v. Limelight Networks, Inc., Nos. 2009-1372, -1380, -1416, -1417, slip op. (Fed. Cir. May 13, 2015) , in which, on remand from the U.S. Supreme Court, a divided Federal Circuit panel recently revisited questions of divided infringement. The majority opinion, written by Judge Richard Linn, took a limited view of the extent of liability under § 271(a) of the U.S. Patent Act. The majority contended that the broader view championed by the dissent would “depart from three indispensable common law limits on joint tortfeasor liability”: (1) a need for “personal guilt” for tortious conduct; (2) a need for “mutual agency or cooperation” at a level that commonly does not exist “in arms-length seller-customer relationships”; and (3) a need for “knowledge of harm,” which the majority took to “require knowledge of the patent, knowledge of the steps recited in the claims, and knowledge of the risk of infringement.” Akamai, slip op., at 20-23. In dissent, Judge Kimberly Moore argued that, for liability under § 271(a), “knowledge of the harm” is not required although “knowing of [the other relevant] party’s actions” is. Id. at 27 (Moore, J., dissenting). More generally, Judge Moore argued that her broader view of § 271(a)’s scope “is consistent with general common law principles of tort liability.” Id. at 21.
This short blog post is not the place to resolve such debates over the bounds of joint tortfeasor liability or its analogs under the U.S. Patent Act. As indicated above, the aim here is to highlight how private law principles continue to inform debates over modern statutory law. If the post inspires you to resolve the questions over which the Federal Circuit judges tussled—perhaps in a way that might help guide a later en banc decision or reconsideration of this case by the Supreme Court—so much the better!