single entity rule that permits two parties to divide up a patent method with impunity except where one either direct or controls the other but of course we recognize that that argument has to await another exist the that all of this sort of standard common knowledge like tortfeasor principle would be drawn into an analysis center to seventy one it would what about knowledge i mean the problem is you're going to pick and choose from right here you're going to allow some to be here on another or we want them all to be drawn in construed as they were under the common law and before i explain that let me just say that even if we were conceiving if constrained to one form of attributed liability that is liabilities that flows from direction or control we think that the evidence in this that those terms particularly the term direction ok now you're not only answering my question ok i'm sorry maybe i didn't write my question is a clean slate i don't look at the word direction or control what i want to know from you is in on a clean slate scenario how are you going to pull in the joint so i didn't understand your question and i now do think this joint of the at common law the joint towards b s or attribution principles all of which required knowledge that is not knowledge that a tort was being if you know someone has a patent you can't be doing it right because otherwise performing a method doesn't cause damage in the abstract the damage by virtue of it causing untoward so many of the restatement prosser many of the very true this isn't text you sent to us and quoted to  a very great difference at common law between knowledge that damage will that some harm will follow from something that i do or that you and i do gather do and knowledge that the law in fact for hibbett prohibits that there are lots of infringement which is a strict liability toward is not a alone in the world of strict liability towards nuisance product liability trespass there are lots and lots of towards that at common  w had strict liability the absolute beautician rule applied only where you had knowledge that the party combining with you or performing the other acts that together caused a legally actionable harm it was the knowledge requirement necessary to attribute to you my x that is to make you responsible for my x you had to know what i was doing so under this theory am i right that only the master mind the person who has knowledge of the patents and the fact that he in conjunction with maybe a customer or an end user or something when all these steps are going to perform  going to unfriend someone patent that that is the level of knowledge that must exist in order for infringement to exist in the joint toward these are contexts in the joint tortfeasor context the knowledge that a defendant must have to to know you have to have knowledge in the rules that the cases at common law were clear but you have to have knowledge that if the following steps are committed whether it's a trespasser or a nuisance or product level if the following things are done harm will occur you don't have to know that the law prohibits that but if you know that how you performing any method assuming it's not a method that is innately harmful how could that abs knowledge of someone else's property rights with regard to the method absolute knowledge of someone else's patent how could you ever have knowledge i'm i'm not understanding if you're trying to artfully avoid answering my question or if they're not at all  think what we're trying to talk about do you have to have knowledge of the patent in order for you to be liable to know well then how do you have knowledge of a tort because performing a method does not uniquely cause a tort it only cause the tort by virtue of the fact that it would infringe on someone else's property rights rights so let's just forget the divided infringement context let's just say take a single party is infringing you don't have to show you have to do your libel only if you know you  doing all of the requisite steps you don't have to know that the requisite steps are claimed by a valid patent and the same is true when some of the steps are performed by someone that you were either in concerted action with or whom you are so you only want them to have to have knowledge of the other person performing the step correct but how is that i don't see how that comports with the treatises that you submitted to us which are reflective of the common law state of joint to principles because they don't just say knowledge of the act every one of those treatises goes further and says knowledge that the act when taken in concert caused damage and that's the problem that i'm having with reconciling the argument because knowledge of isn't knowledge of damage only when you know someone else has a property right you have knowledge that you're going to cause harm when you commit suicide ok well i i don't i'm certainly not trying to artfully evade anything that you're asking me i don't think i can give a better it since we're we're dealing in the clean slate world my answer would be that i read the common law precedents whether it's the restatement or processor or keaton or robinson to say that the acts of a third party were attributed to an accused tortfeasor when the accused towards these your knew of the steps that a third party was doing either in concert with the accused or at the direction or control of the accused or in a master servant principal agent relationship with the accused period not that it constituted for with the intent that it constitutes a legal harm if if but whether i'm right or wrong about that with respect judge moore i don't think would change the outcome of this case because of the submission and the question in this particular case and here if i may with permission just address myself to the and how do i find for you well there we have the excuse why my limelight certainly knows the awful what this all of the steps that are being performed that coincide with the the requisite system  limelight performed all four of the steps itself it would have no defense by the fact that it didn't know that there was a valid patent that included those four steps the question in this case is whether limelight can be says you have to know it causes damage it says it right mr action you cited to us did they know there was a valid patent that existed because that's what i understand the processor standard to require not that they knew that them in combination with customers or end users would commit all of the steps but did they also know that performing that combination of steps would cause damage they don't have to know you don't in order to be wired for a toward a strict liability toward you don't have to know that in fact your conduct is tortious as a matter of law you may have to know that it causes damage in strict liability circumstances i mean in a product liability case you don't have to know that your product causes damages if i trespass onto your actions i don't have to know in europe your property i don't have to know that it's your property i have to know that i'm walking to this particular place and the same is true for the strict liability toward a patent infringement and i've just come out from another direction and distance reprieve because if time is running out but i am just i appreciate that some argue that we've got a quote from them or see them come off but looking at it from another event i'm looking at two seventy one the and i'm wondering if i'm going to write a claim now and the laws changed in the way that are advocating can't i just in the method claim if it was otherwise going to cover all the conduct of the customers put in one step of the method that says and someone proves up provides a machine to that customer kind of arguably at least an unintended consequence of that's not the way the loss is developed and people contemplate a lot of work so i don't think so and i think you know taking muni option as for rec league decided as as we have to for purposes  today that that is in fact what you had in new york city immunity option the defendant thompson created a website it offered it was a third party in the it didn't practice any of the methods steps it created a website that said you know and sellers can come to this website and use the process and what it says to the bitter towards you can you can bid on a number you're willing to pay for these original issue ones either by sending your number in or you can send you can you know when the screen comes up and says how much you want to put a plug it in and this court held that that doesn't constitute for common law actor you should principles direction or control because  step of the patented method was the submission of a number and thomson couldn't care less whether you submitted your number by fax which didn't implicate the bastard or spy in the computer system and it didn't provide you any information at all about what you had to do it was similar to if in this case the limelight had said to its content provider customers look if you don't want to serve all the objects just send them stuff and send them to us somehow you can put them on a cd who can email them to us you can tag that whatever you want just send them to us we'll take care of it under muni option and be mc that wouldn't be the requisite amount of direction it was simply here's we have a system if you want to use it you know send us something in the mail that tells us what you would like us to do in this case of my business i want to know if you do something else so what about  i want to pick up one judge for questions and one of the things i'm struggling against is the notion of importing joint turkeys or principle in seventy one a when it c and so and feeling of an awkward about trying to pull a common law into a when it seems like congress actually was aware of it and pulled it in to be and  very precise fashion so we know i mean how do i handle that well there were plenty of instances that prior to the one nine hundred fifty two act in which the courts turkeys or principle well nigh and to the exclusion of everything else so i think the best i can give you is this it is it is it is a a dictate of the supreme court and this court has recognized that that congress is not presume to derry gave from common law principles unless it says so expressly and to seventy one a the relevant terms are whoever makes uses cells or offers to sell is we know sufficiently capacious to include the combined acts of two different parties because the very same language for example is used in whoever invents and therefore it's not as if i can if i may just finish i can point you to a statement where congress said oh by the way there's there was another category of joint tort lies of direct liability not induced or contributory liability that also exists and here it is the relevant rules of construction are the words of two seventy one a certainly includes i don't think anybody disputes that in some circumstances the combined acts of two different invention well the the patented invention in the case is a product in this court i don't think this court has ever applied a rule for direct tort liability to anybody who did not for making the product unless the product was in fact made by that party and here is what we have are to indicate in the rules that would suggest otherwise i'm not advocating a rule that would suggest otherwise to give the rules for making is i mean there could be active usual rules i suppose applied to that but i don't do that i guess if i guess across medical was now that i'm thinking about it was an apparatus claim where one element of the apparatus was whatever the device was in contact with bowl and the question was whether the shirt whether medtronic it was medtronic was liable for the actions of the surgeons which were making the apparatus i mean normally normally and in the context of apparatus claims of course whoever puts the chain on judge moore's hypothetical is a direct infringer so you don't have write the same situation but of course then whoever of the principles of the common law principles you're advocating would suggest that maybe you don't need to showing can even in a structural situation in africa situation if you sell the components to somebody completes the device then well i think in cross medical discord did allow for that possibility because if it if it had concluded that the medtronic representative who was in the operating room and was in fact quote directing the surgeon what to do that then there would be liability and that was the basis on because that didn't happen that was the basis on which disco t b m c distinguished cross but i do think that if one just just going back to the the the method claim that we have here under even taking muni auction and  m c as bond binding law on this panel which they are the fact is that only in this case we're only asking you to decide this case unlike limelight unlike the only option win light doesn't suit merely instructed to customers that they can submit a bid of their choosing it requires them to use a specific host name and in fact it gives them multiple host names to use and tells t detail which one to use depending on the type of object to be served it tells them in great detail how to perform the tagging step in order to make line like system work and it helps them to do it every step of the way in order to make use of the patented process and we think that under under the under the meaning of direction as it properly it should be construed consistent with has to be a formal legal relationship between the two that is master servant a principal agent a contract a binding contractual obligation i think that this court  option and if you think that and that's of course the prior panel in this case held that that's how you any option should be construed that there had to either be a continued forcible contractual obligation or there had to be a formal a the last paragraph before the conclusion under v m c resources the controller direction task is satisfied in situations where the law would traditionally whole direct accuser vicariously liable what it was saying was one of or both of two things one as as judge and jury wrote for the court in travel century it was saying you could either one way of establishing a vicarious of a stablish ing attribution is vicarious liability in the formal relationship sense and another whether the of establishing vicarious liability is showing that there was sufficient direction for control such that the conduct of a is attributed to the i mean i actually think so you might potentially write about what you're saying and i might want to go that way but what do i do with the supreme court's statement assuming without citing the federal circuit holding immunity option is correct there has simply been no infringement of the method in which respondents a stake out in interest because something where we could reach the other shore but i think i recognize the support use that language and if this panel concludes that the supreme court of the united states has held that under two seventy one  you're right let me suggest why i don't think that that's a fair reading of what the supreme court was doing the supreme court said that the supreme court declined to consider our cross petition or what was roman numeral one of our argument on on line lights petition is that you have to resolve the two seventy one a issue and they made it clear in their opinion that the question presented quote clearly focused on b not a and that they said that their opinion quote presupposes that limelight has not committed direct infringement under a they you know that aloud as to the fact that the possibility of your argument is even though that sentence  appear clear on the face they were accepting the proposal suggestion about what the option actually does stand for by the panel in this case and the director and not actually rendering an independent judgment about actually that's right and i think you know if you don't understand these the oral argument in the supreme court was and i think it's fair to say ninety eight percent of the oral argument was about to seventy one a and not to seventy one b but in the entire argument about two seventy one a there was never any discussion about what the muni option decision itself requiring junie option was used throughout as a sensually a substitute the then vacated panel decision in this very case which construed munni option in a particular way a way that you know we suggested then and you know  is in appropriately narrow but i don't think that you should that you need to or should read the supreme court as having rendered an opinion about the contours of the muni option to seventy one infringement precedents and in particular the decision and unity option to find that limelight does not carry out every step of the patented method either directly or vicariously community option states that the controller direction standard is satisfied the in that decision what the court the preamble to that statement is a discussion of the fact that various factors that have been listed in the district court's instruction were not relevant and what did matter was whether there was control or direction exercised over the conduct of the of the customer by thompson and remember that control or direction standard is not something that the court made up in v m c it was taken out of the restatement of agency it's an agency law concept and the what the court was very clearly alluding to in v m c and again in uni auction was the notion of the legal right to control the act of that third party and that legal control as being the basis for conduct that tradition and as as a policeman or a matter of been talking about i think there's common ground that for the court today the question is how what's the decision under the existing precedents the conclude jand that under the b m c immunity option there was an inadequate basis for imposition of liability on line life was not just the conclusion the district court it was the conclusion of the original panel unanimous panel in this case it was the conclusion of the embankment jordi and four of the five dissenting judges at the end backstage originally it was the conclusion of the unanimous supreme court and one thing i want to that said to the supreme court you are committed i'm not going to hold them to some sort of a nation against interests or something like that you all both represented new options stood for the following principle they represented and stood for an awful principle because they wanted the think they did argue that the mc was wrongly decided i think that i saw throughout their argument mention that joint tortfeasor principles ought to apply but that living under the world of the n c they thought that b and c wasn't so bad why i think it matters is that the supreme court has stated i think that you you aptly raise that and in your prior questions the supreme court has stated what it understands to be approximately three times i have i have the slip opinion so if you have the public's opinion then it will not it may not be as easy to follow but on the flip opinion on page six the court said assuming without section assuming without deciding that the federal circuit folding immunity option is correct there has simply been no infringement of the method in which respondents have staked out an interest because the performance of all the patent steps is not attributable to any one person at the end of section two a just before the beginning of section to be drawing the analogy to deep south the supreme court said similarly in this case performance of all the claimed stuff cannot be attributed to violated unless a single actor can be held responsible for the performance of all steps of the patent because the limelight did not undertake all steps of the seven hundred three patent and cannot otherwise be held responsible for all those steps respondents have not been violated and i would emphasize that in its briefing in the supreme court of the united states aka my said the federal circuit has created an inflexible single entity rule under section two seventy one act whereby direct infringement requires a single groovy interpreted in iraq so i thought this was the question that we spent some time talking about it seems like a long time ago when the n back court heard argument and in two thousand and eleven and i think that our full presentation in response to that issue as is presented in those briefs but the critical principle is that and i think that your honour's question brought it out direction or direct infringement under section two seventy one a is a strict liability statutory tort and the only basis of attribution of conduct is therefore of strict vicarious liability that is a search of circumstance in which the principle it was being charged with the conduct has  knowingly acting in concert to perform the steps regardless of whether we know about them or your honor because the issue of what sort of joint tortfeasor liability ought to exist is addressed by congress and section two seventy one of the ins and see and indeed i think in the questioning of mr rexford and you brought out some of the very points and i think that they are quite apt the supreme court's decision in the central bank of denver case really illustrates the fact that when congress adopts a set of  liability because the it seems to me allows for imposition of liability against a single actor who induces someone else to in french for example i don't understand that to be surely these are li i understand that to be single tortfeasor liability i think that if you look at the roots of the doctrines of a contributory induced infringements where they precisely come from as for example judge calf decision where he talks about the fact that we have joint tortfeasor principles and so therefore someone who induces another to infringe should be held responsible for that conduct under a joint caesar concept and that it then gets becomes developed under the common off infringement before nine hundred fifty two whereby certain types of conduct culpable conduct may be the basis for imposition of liability against one who has not himself or herself directly infringed the captain not directly carried out each step not directly made or implemented every element of the patent but who contributor induced another to do so in a way that was culpable and therefore can provide for an extension of liability so direct infringement had always been understood to be that strict performance of every element because for example in this case the elements of the patent are not new it is not the past the elements that are patentable it is the combination of elements the entire method that's patentable and therefore in that case there was the question well what do we do about a circumstance where someone seems to be knowingly evading and patent by by doing everything but the last step and there was a basis there for finding that because the device was completed by the customer that there was a basis for imposition of liability but that  isn't and so section two seventy one b and section two seventy one see deal with those circumstances where there is culpable conduct that could be a basis for liability here we don't have that circumstance we have a claim an optimized chose to pursue to pursue a cla c an immunity option was that doesn't mean that it can only be a single person it could be multiple people but then there has to be a basis for attributing the conduct of that other party to the defendant and customers can only use in a certain way and i don't want to debate the nature of the product or the technology because just assume that i'm taking it accurately with you group or not you make a product that customers can only use in a certain way and when they do i do a pic with me you know so why can't you be held responsible for it knowingly causing them to perform that last oh well i think your honor because of and the nature of the of the direct  it depends on background principles of tort liability which stablish that when you are talking about extending liability for a strict liability tort the base the only basis that is recognized in the law is pure vicarious liability but let me t where there was no direct duty imposed on the liable party that was breached and so it is it is simply circular to say yes if you say well you have a duty to avoid  hypothetical you don't want to agree with it that this is actually one that you produce a product that has only one use and when your customer uses it in a way you absolutely intend instruct him to use it that completes the method that is the final step of the method why is that a scenario in which there exists no basis for infringement because i think i've i've i've done the best that i can to try to provide them to be no answer and let me try to provide a policy answer that i hope will help to address it to some extent drafted them that claims drafted this way were capable of being infringed by the combined active of the respected actor this isn't an indefinite this or a lack of clarity in the claiming what your honor i don't i don't know about that but the one thing that i can can say is that many of the claims that were written off the specification byock of my own account do not implicate any issue of joint infringement that the he's mr waxman is right and i didn't see you cite anything to the contrary that there existed some cases prior to the next in the nine hundred fifty two patent act that would support the notion of a joint infringement theory he cited i think two of them in his paper briefs to us so if those cases sort of represented say a common law concept then why are these people writing the claims that they're writing on the backdrop of the belief that those claims ken are capable of being infringe sure wasn't that the liability in that case was imposed under as and it was a matter of indirect indirect infringement and the court at that point prior to nine hundred fifty two infringement w indirect reference it was still a common law matter that was being developed in the courts and the court said we think this is not ok and we're going to put it under contributory infringement when congress codified section two seventy one b and c the bases for indirect codified and to the extent that there is not that of an actor does not permit direct infringement the basis for a position a liability must fall under one of those it does not here and of course occupy didn't make such a claim and  so the fact of the matter is that there have been and there were a number of amicus briefs that were filed at the end backstage which made the point that it has been understood for a very long time that claims should be drafted method claims should be drafted so that they can be performed from the point of view of a single act and to the extent that these claims were not that may be a problem with drafting but this court has repeatedly noted that where there is a such a process lots of claims that are going to be rendered incapable of being friends but i tend to think that the world patent prosecutors was not aware of the fact that claims could be drafted this way because there's a good zillion claims actually drafted apple's briefs at the end backstage if you look at it there was also a statement of some discussion of the in our brief at the end that stage there was some discussion of this in the briefing in the supreme court i'd be happy to send a letter to the court after argument to try to provide more specific references to the to that material but i think the sky is falling concern i think is unwarranted and we know that by the passage of time i mean muni option was decided in two thousand and eight and so it's been on the it's been the law for six years and i don't see i'm not and have not been made aware and i think that if if there were such a circumstance it would have been brought to the to the attention of the court room when the briefing occurred earlier this year i'm not aware that there has been a flood of patents that have been held to be unenforceable or as a result of you see many claims that are drafted where they are involved interactive systems and they are then drafted from the point of view of one perspective or another perspective and so that they can be enforced against the different was applied by the panel in earlier in this case is one that does lend itself to some clarity and at the same time reaches those circumstances that does not permit someone to perform a method by reaching out please show that limelight knew about the seven zero three patent in the claims in the patent that hey that evidence is not in the original joint appendix but if it's relevant to the court we can send a letter and provide the reference site second of all problem is joint tortfeasor principles in general require such a thing in order to withstand liability to the actions of a third party or second party or whatever whom do we want to import that concept t wanting which is otherwise a strict liability right it would not be imported into two seventy one eight to seventy one a states a strict liability toward just like products liability and nuisance and trespass the knowledge requirement is imported into any action brought for violation of one of those strict liability towards if the accused tortfeasor is to be charged with not only his own conduct but the conduct of someone else and it doesn't change the knowledge or intent requirement of the underlying toward and as to that point i would be you know in terms of what authorities there are or aren't i mean we in our in our brief we were comprehensive but if you look at page five of our letter brief and what no one we addressed the point that visa attribution rules were readily and commonly applied in the in the infringement context and the non infringement context in strict liability towards that is just a background principle of attribution it doesn't change the elements of the tort itself now the argument that's made that well you know this is you're just saying that that to seventy one a construed the way we want is simply going to render irrelevant or it creates some huge overlap with two seventy one big my response to that is it is a commonplace in the patent law as it exists now and in tort law in general in the context of you know someone who is charged with with a tort under a negligence and strict liability theory somebody who is charged with unfair competition in count one in tortious interference and count two and someone who was charged as for example was the case in global tech case which went from this port up to the supreme court there the defendant was accused under count one two seventy one on a count to two seventy one the jury was properly instructed the jury found the defendant libel and under both was there overlap yes is overlap a  necessary concomitant of different theories of cause of action yes but it's far better than the world of limelight advocates in which the advocates in which there's a huge gaping hole in which i mean to ever back to the in this case the bio relief and the brief filed by the american bar association point in the supreme court and i believe also in the unbiased court point out that pioneer patents in a number of different areas and the bio where he points out the pioneer patent that launched the field of biotechnology was a method patent that had more than one step was it drafted so that it required two different people or was it drafted so that it didn't matter whether the steps were performed by one or two hundred the rules they advocated if mr cantor and i get together and say wow this is a really cool pioneer invention we really don't want to pay royalties to the patent holder so why don't you a number of steps and i'll do the even numbered steps no liability there is no under a common law that would never have occurred and there's no reason to think that congress wanted it to occur here thank