United States Court of Appeals 

for the Federal Circuit ______________________ 

AKAMAI TECHNOLOGIES, INC., 

THE MASSACHUSETTS INSTITUTE OF 

TECHNOLOGY,

Plaintiffs-Appellants

v.

LIMELIGHT NETWORKS, INC.,

Defendant-Cross-Appellant

______________________ 

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

______________________ 

Appeals from the United States District Court for the 

District of Massachusetts in Nos. 06-CV-11585, 06-CV11109, Judge Rya W. Zobel.

______________________ 

Decided: August 13, 2015

______________________ 

SETH P. WAXMAN, Wilmer Cutler Pickering Hale and 

Dorr LLP, Washington, DC, argued for plaintiffsappellants. Also represented by THOMAS G. SAUNDERS, 

THOMAS G. SPRANKLING; MARK C. FLEMING, ERIC F.

FLETCHER, LAUREN B. FLETCHER, BROOK HOPKINS, Boston, 

MA; DAVID H. JUDSON, Law Offices of David H. Judson, 

Dallas, TX; DONALD R. DUNNER, ELIZABETH D. FERRILL, 

Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, 

Washington, DC; JENNIFER S. SWAN, Palo Alto, CA; 

ROBERT S. FRANK, JR., G. MARK EDGARTON, CARLOS
2 AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 

PEREZ-ALBUERNE, Choate, Hall & Stewart, LLP, Boston, 

MA.

AARON M. PANNER, Kellogg, Huber, Hansen, Todd, 

Evans & Figel, P.L.L.C., Washington, DC, argued for 

defendant-cross-appellant. Also represented by JOHN 

CHRISTOPHER ROZENDAAL, MICHAEL E. JOFFRE; MICHAEL 

W. DE VRIES, ALLISON W. BUCHNER, Kirkland & Ellis

LLP, Los Angeles, CA; YOUNG JIN PARK, New York, NY; 

DION D. MESSER, Limelight Networks, Inc., Tempe, AZ. 

JEFFREY I.D. LEWIS, Fried, Frank, Harris, Shriver & 

Jacobson LLP, New York, NY, for amicus curiae American Intellectual Property Law Association. Also represented by KRISTIN M. WHIDBY, Washington, DC; LISA K.

JORGENSON, American Intellectual Property Law Association, Arlington, VA.

SCOTT A.M. CHAMBERS, Porzio, Bromberg & Newman, 

P.C., Washington, DC, for amicus curiae Biotechnology 

Industry Organization. Also represented by CAROLINE 

COOK MAXWELL; HANSJORG SAUER, Biotechnology Industry Organization, Washington, DC.

CHARLES R. MACEDO, Amster Rothstein & Ebenstein 

LLP, New York, NY, for amicus curiae Broadband iTV, 

Inc. Also represented by JESSICA CAPASSO. 

PAUL H. BERGHOFF, McDonnell, Boehnen, Hulbert & 

Berghoff, LLP, Chicago, IL, for amicus curiae Intellectual 

Property Owners Association. Also represented by PHILIP 

S. JOHNSON, Johnson & Johnson, New Brunswick, NJ; 

KEVIN H. RHODES, 3M Innovative Properties Co., St. Paul, 

MN; HERBERT C. WAMSLEY, Intellectual Property Owners 

Association, Washington, DC.

CARTER G. PHILLIPS, Sidley Austin LLP, Washington, 

DC, for amicus curiae Pharmaceutical Research and 
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 3

Manufacturers of America. Also represented by JEFFREY 

P. KUSHAN, RYAN C. MORRIS; DAVID E. KORN, Pharmaceutical Research and Manufacturers of America, Washington, DC; DAVID R. MARSH, LISA A. ADELSON, Arnold & 

Porter, LLP, Washington, DC; ROBERT P. TAYLOR, MONTY 

AGARWAL, San Francisco, CA. 

DEMETRIUS TENNELL LOCKETT, Townsend & Lockett, 

LLC, Atlanta, GA, for amici curiae Nokia Technologies Oy

and Nokia USA Inc.

DONALD R. WARE, Foley Hoag LLP, Boston, MA, for 

amicus curiae The Coalition for 21st Century Medicine. 

Also represented by MARCO J. QUINA, SARAH S. BURG. 

______________________ 

Before PROST, Chief Judge, NEWMAN, LOURIE, LINN, DYK,

MOORE, O’MALLEY, REYNA, WALLACH, and HUGHES, Circuit 

Judges.*

PER CURIAM. 

This case was returned to us by the United States Supreme Court, noting “the possibility that [we] erred by too 

narrowly circumscribing the scope of § 271(a)” and suggesting that we “will have the opportunity to revisit the 

§ 271(a) question . . . .” Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111, 2119, 2120 (2014). We 

hereby avail ourselves of that opportunity.

Sitting en banc, we unanimously set forth the law of 

divided infringement under 35 U.S.C. § 271(a). We conclude that, in this case, substantial evidence supports the 

jury’s finding that Limelight Networks, Inc. (“Limelight”) 

* Circuit Judges Taranto, Chen, and Stoll did not 

participate.

 
4 AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 

directly infringes U.S. Patent 6,108,703 (the “’703 patent”) 

under § 271(a). We therefore reverse the district court’s 

grant of judgment of noninfringement as a matter of law.

I. DIVIDED INFRINGEMENT

Direct infringement under § 271(a) occurs where all 

steps of a claimed method are performed by or attributable to a single entity. See BMC Res., Inc. v. Paymentech, 

L.P., 498 F.3d 1373, 1379–81 (Fed. Cir. 2007). Where 

more than one actor is involved in practicing the steps, a

court must determine whether the acts of one are attributable to the other such that a single entity is responsible for the infringement. We will hold an entity

responsible for others’ performance of method steps in two 

sets of circumstances: (1) where that entity directs or 

controls others’ performance, and (2) where the actors

form a joint enterprise.1

To determine if a single entity directs or controls the 

acts of another, we continue to consider general principles 

of vicarious liability.2 See BMC, 498 F.3d at 1379. In the 

1 To the extent that our decision in Golden Hour 

Data Systems, Inc. v. emsCharts, Inc., 614 F.3d 1367 (Fed. 

Cir. 2010) is inconsistent with this conclusion, that aspect 

of Golden Hour is overruled.

2 We note that previous cases’ use of the term “vicarious liability” is a misnomer. Restatement (Third) of 

Torts: Apportionment of Liability § 13 (2000). In the 

context of joint patent infringement, an alleged infringer 

is not liable for a third party’s commission of infringement—rather, an alleged infringer is responsible for 

method steps performed by a third party. Accordingly, we 

recognize that vicarious liability is not a perfect analog. 

Nevertheless, as both vicarious liability and joint patent 

infringement discern when the activities of one entity are 

 
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 5

past, we have held that an actor is liable for infringement 

under § 271(a) if it acts through an agent (applying traditional agency principles) or contracts with another to 

perform one or more steps of a claimed method. See BMC, 

498 F.3d at 1380–81. We conclude, on the facts of this 

case, that liability under § 271(a) can also be found when 

an alleged infringer conditions participation in an activity 

or receipt of a benefit upon performance of a step or steps 

of a patented method and establishes the manner or 

timing of that performance. Cf. Metro-Goldwyn-Mayer 

Studios Inc. v. Grokster, Ltd., 545 U.S. 913, 930 (2005)

(stating that an actor “infringes vicariously by profiting 

from direct infringement” if that actor has the right and 

ability to stop or limit the infringement). In those instances, the third party’s actions are attributed to the 

alleged infringer such that the alleged infringer becomes 

the single actor chargeable with direct infringement. 

Whether a single actor directed or controlled the acts of 

one or more third parties is a question of fact, reviewable 

on appeal for substantial evidence, when tried to a jury. 

Alternatively, where two or more actors form a joint 

enterprise, all can be charged with the acts of the other, 

rendering each liable for the steps performed by the other 

as if each is a single actor. See Restatement (Second) of 

Torts § 491 cmt. b (“The law . . . considers that each is the 

agent or servant of the others, and that the act of any one 

within the scope of the enterprise is to be charged vicariously against the rest.”). A joint enterprise requires proof 

of four elements:

(1) an agreement, express or implied, among the 

members of the group;

attributable to another, we derive our direction or control 

standard from vicarious liability law. See BMC, 498 F.3d 

at 1379.

 
6 AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 

(2) a common purpose to be carried out by the 

group;

(3) a community of pecuniary interest in that 

purpose, among the members; and

(4) an equal right to a voice in the direction of the 

enterprise, which gives an equal right of control.

Id. § 491 cmt. c. As with direction or control, whether 

actors entered into a joint enterprise is a question of fact, 

reviewable on appeal for substantial evidence. Id. 

(“Whether these elements exist is frequently a question 

for the jury, under proper direction from the court.”).

We believe these approaches to be most consistent 

with the text of § 271(a), the statutory context in which it 

appears, the legislative purpose behind the Patent Act, 

and our past case law. Section 271(a) is not limited solely 

to principal-agent relationships, contractual arrangements, and joint enterprise, as the vacated panel decision 

held.3 Rather, to determine direct infringement, we 

consider whether all method steps can be attributed to a 

single entity.

II. APPLICATION TO THE FACTS OF THIS CASE

Today we outline the governing legal framework for 

direct infringement and address the facts presented by 

this case. In the future, other factual scenarios may arise 

which warrant attributing others’ performance of method 

steps to a single actor. Going forward, principles of attribution are to be considered in the context of the particular facts presented. 

3 To the extent our prior cases formed the predicate 

for the vacated panel decision, those decisions are also 

overruled.

 
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 7

The facts of this case need not be repeated in detail 

once again, but the following constitutes the basic facts. 

In 2006, Akamai Technologies, Inc. (“Akamai”) filed a 

patent infringement action against Limelight alleging 

infringement of several patents, including the ’703 patent, 

which claims methods for delivering content over the 

Internet. The case proceeded to trial, at which the parties 

agreed that Limelight’s customers—not Limelight—

perform the “tagging” and “serving” steps in the claimed 

methods. For example, as for claim 34 of the ’703 patent, 

Limelight performs every step save the “tagging” step, in 

which Limelight’s customers tag the content to be hosted 

and delivered by Limelight’s content delivery network. 

After the close of evidence, the district judge instructed

the jury that Limelight is responsible for its customers’ 

performance of the tagging and serving method steps if 

Limelight directs or controls its customers’ activities. The 

jury found that Limelight infringed claims 19, 20, 21, and 

34 of the ’703 patent. Following post-trial motions, the 

district court first denied Limelight’s motion for judgment 

of noninfringement as a matter of law, ruling that Akamai had presented substantial evidence that Limelight 

directed or controlled its customers. After we decided 

Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. 

Cir. 2008), the district court granted Limelight’s motion 

for reconsideration, holding as a matter of law that there 

could be no liability.

We reverse and reinstate the jury verdict. The jury 

heard substantial evidence from which it could find that 

Limelight directs or controls its customers’ performance of 

each remaining method step, such that all steps of the 

method are attributable to Limelight. Specifically, Akamai presented substantial evidence demonstrating that 

Limelight conditions its customers’ use of its content 

delivery network upon its customers’ performance of the 

tagging and serving steps, and that Limelight establishes

the manner or timing of its customers’ performance. We 
8 AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 

review the evidence supporting “conditioning use of the 

content delivery network” and “establishing the manner 

or timing of performance” in turn.

First, the jury heard evidence that Limelight requires 

all of its customers to sign a standard contract. The 

contract delineates the steps customers must perform if 

they use the Limelight service. These steps include 

tagging and serving content. As to tagging, Limelight’s 

form contract provides: “Customer shall be responsible for 

identifying via the then current [Limelight] process all 

[URLs] of the Customer Content to enable such Customer 

Content to be delivered by the [Limelight network].” J.A. 

17807. In addition, the contract requires that Limelight’s 

customers “provide [Limelight] with all cooperation and 

information reasonably necessary for [Limelight] to 

implement the [Content Delivery Service].” Id. As for the 

serving step, the form contract states that Limelight is 

not responsible for failures in its content delivery network 

caused by its customers’ failure to serve content. See id. 

If a customer’s server is down, Limelight’s content delivery network need not perform. Thus, if Limelight’s customers wish to use Limelight’s product, they must tag and 

serve content. Accordingly, substantial evidence indicates 

that Limelight conditions customers’ use of its content 

delivery network upon its customers’ performance of the 

tagging and serving method steps.

Substantial evidence also supports finding that Limelight established the manner or timing of its customers’ 

performance. Upon completing a deal with Limelight, 

Limelight sends its customer a welcome letter instructing 

the customer how to use Limelight’s service. In particular, the welcome letter tells the customer that a Technical 

Account Manager employed by Limelight will lead the 

implementation of Limelight’s services. J.A. 17790. The 

welcome letter also contains a hostname assigned by 

Limelight that the customer “integrate[s] into [its] 

webpages.” J.A. 17237; 17790. This integration process 
AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. 9

includes the tagging step. Moreover, Limelight provides 

step-by-step instructions to its customers telling them 

how to integrate Limelight’s hostname into its webpages 

if the customer wants to act as the origin for content. J.A. 

17220. If Limelight’s customers do not follow these precise steps, Limelight’s service will not be available. J.A. 

587 at 121:22–122:22. Limelight’s Installation Guidelines 

give Limelight customers further information on tagging 

content. J.A. 17791. Lastly, the jury heard evidence that 

Limelight’s engineers continuously engage with customers’ activities. Initially, Limelight’s engineers assist with 

installation and perform quality assurance testing. J.A. 

17790. The engineers remain available if the customer 

experiences any problems. J.A. 17235. In sum, Limelight’s customers do not merely take Limelight’s guidance 

and act independently on their own. Rather, Limelight 

establishes the manner and timing of its customers’ 

performance so that customers can only avail themselves 

of the service upon their performance of the method steps. 

We conclude that the facts Akamai presented at trial 

constitute substantial evidence from which a jury could 

find that Limelight directed or controlled its customers’ 

performance of each remaining method step. As such, 

substantial evidence supports the jury’s verdict that all 

steps of the claimed methods were performed by or attributable to Limelight. Therefore, Limelight is liable for 

direct infringement.

III. CONCLUSION

At trial, Akamai presented substantial evidence from 

which a jury could find that Limelight directly infringed 

the ’703 patent. Therefore, we reverse the district court’s 

grant of judgment of noninfringement as a matter of law. 

Because issues in the original appeal and cross-appeal 

remain, we return the case to the panel for resolution of 

all residual issues consistent with this opinion.