Indirect Infringement Claims, Once Dead, Are Heading Towards the (Lime)Light… Thanks to Akamai

by VolpeKoenig on March 28, 2013

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By John C. Donch, Volpe and Koenig, P.C.

When Aristocrat Technologies Australia Pty Ltd. lost its infringement action against International Game Technology before the Northern District of California in 2010, there seemed to be no hope for Aristocrat’s indirect infringement allegations – the district court’s grant of summary judgment to International left Aristocrat’s indirect infringement claims dead in the water. Yet, while Aristocrat’s case was pending appeal, the Federal Circuit handed down a game-changing decision concerning what constitutes induced infringement in Akamai Tech. v. Limelight Networks.

Prior to Limelight, the patentee would have to show that a single entity was induced to perform each step of a method patent in order to prove indirect, or induced, infringement. The Federal Circuit decided in Limelight that indirect infringement could be achieved by multiple parties performing the various steps of a patented method.
The test for induced or indirect infringement under Limelight requires that the patentee show that the inducer (1) knew of the method patent, (2) induced the performance of steps of the method, and (3) that the claimed method steps were performed. It is no longer necessary to prove that all the steps were committed by a single actor; all that is required is that all the claimed steps are performed.

In Aristocrat Technologies the asserted patents related to gaming machines and methods of awarding prizes for playing the machines. The accused products required two separate actors working together to perform the prize awarding method described in Aristocrat’s patents; the first actor being the casino itself by making available the gaming machine and the second actor being the player of the game. Taking the new case law from Limelight into consideration during review of Aristocrat Technologies v. International Game Technology, the Federal Circuit revived Aristocrat’s indirect infringement claims by vacating the remanding the lower court’s grant of summary judgment.

It will be interesting to see whether the Federal Circuit resurrects more indirect infringement claims for other cases in future as they come before it.

Note: Special thanks to Amber Stiles, Law Clerk at Volpe and Koenig, for her contributions to this post.

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