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 appeals”). 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, Illinois, 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 & Lione, of Chicago, Illinois, for amici curiae Aristocrat Technologies 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 rehearing 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 Organization 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, Pharmaceutical 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 & Peterson, P.S., of Seattle, Washington, for amicus curiae Washington 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 Minneapolis, 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, California, 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 Systems, 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 Washington, 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 Atlanta, Georgia, argued for defendant-appellee on rehearing 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 & Lione, of Chicago, Illinois, for amici curiae Aristocrat Technologies 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 Organization, 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, Pharmaceutical 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 McKesson 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 Systems, 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 rehearing 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 infringement, 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 defendant 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 infringement 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 completes 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 performance of the claimed steps between them. In fact, sometimes 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 remedy, 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 doctrine 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 follows: 

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 organizations. 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. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008). In McKesson, 

the district court relied on the same cases to grant summary 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 direct 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 infringer 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 necessary 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 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. 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 necessary 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 infringement. 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 infringement 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 Telecomms. 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 infringement 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 infringement, 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 infringement 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 infringer; 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 itself 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 participates in performing the infringing method is, if anything, more culpable than one who does not perform any 

steps. 

The text of the induced infringement statute is entirely 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, Infringement 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 infringement (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) represented a compromise between differing views as to the 

proper scope of the doctrine of contributory infringement. 

The portions of the legislative history addressing subsection (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 substantially restricted the scope of contributory infringement.3 The compromise that Congress adopted with 

respect to subsection (c) restored the doctrine of contributory 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. Minneapolis-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, Trademarks, 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”) (statement 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 communication, television, etc., sometimes involve the new 

combinations of elements which in use are normally 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 invention in patent claims, it is necessary either to 

specify a new method which involves both transmitting 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] appear 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 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.” 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 specifically 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 infringement 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 Subcomm. 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 forward 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 intermediary to commit a criminal act, even though the intermediary 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 constitute 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 principals, 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 demonstrations 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 proscribed 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 additional 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. Convertible 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, promotes, 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 vicarious 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 former 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 infringement 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 frequently 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 “intentionally 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. Upjohn Co., 890 F. Supp. 609, 611-12 (E.D. Tex. 1994) (indirect 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 Restatement (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 infringement 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 infringing, i.e., it provides that anyone who induces infringement “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 patented in the United States “shall be liable as an infringer.” 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 patentee 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 ensure 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 officers 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 Federal Claims. 

The origin of section 281 is enlightening in this regard. When the bill that ultimately became the 1952 Act 

was first introduced in 1950 (as H.R. 9133), the subsection 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, infringes 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 emphasized language was later moved and turned into a separate 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 heavily 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 proposition, our earlier precedents, and the Supreme Court’s 

decision in Aro, do not so hold. 

In reciting the rule that indirect infringement requires 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. Dynacore 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 equipment 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 infringement” 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 infringement 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 contributorily 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 contributory 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. MidContinent 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, whenever 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 infringement 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 occasions 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 Semiconductor 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 opinion 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 liability 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 infringing conduct. 

For example, in Solva Waterproof Glue Co. v. Perkins 

Glue Co., 251 F. 64 (7th Cir. 1918), the defendants performed 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 contributory 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 observed 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. Advance 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 making 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 constitute a change, depends on what one thinks the prior rule 

was. Based on the legislative history, general tort principles, 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 Congress 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 inducing 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 infringement 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 infringement 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 infringers 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 infringement. 

On this new “inducement-only rule,” the inducing entity 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 divided 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.” Although 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 irrelevant 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 communities. 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 patented 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 inducement 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 singleentity 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 consensus. 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, embracing this new rule, does not acknowledge the new 

problems of enforcement and compensation and defense 

that are also created, the new opportunities for gamesmanship and abuse and inequity. For example, if the 

direct infringers are not liable for infringement, one 

wonders whether they are subject to damages or injunction. 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 interactive 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 inducement, 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 International; 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.; Cascades 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 Retailers; 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 majority 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 infringement, although the patent rights are “plainly being violated 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 accompanying 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 Resources, 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 “inducement” 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 Systems, Inc. v. emCharts, Inc., 614 F.3d 1367 (Fed. Cir. 

2010), and holds that interactive and collaborative infringement 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 inducement-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 enforceable. . . . As long as the sale of a product constitutes an arms length transaction between the 

customer and the infringing company, which is insufficient to create vicarious liability, the patent 

holder would likely have no redress against the 

infringer. This result weakens the policy of providing protection to those who devote the time and 

resources to develop otherwise novel and patentable 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 singleentity 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 requirements 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 otherwise— 

 words importing the singular include and 

apply to several persons, parties, or things; . . . the 

words ‘person’ and ‘whoever’ include corporations, 

companies, associations, firms, partnerships, societies, and joint stock companies, as well as individuals . . . . 

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 accordance 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 authorization, 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, infringement 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 “§271(a) of the new 

Patent Code, which defines ‘infringement,’ left intact the 

entire body of case law on direct infringement.” As applied 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 “others” 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 necessary”: 

 Section 271, paragraph (a), is a declaration of 

what constitutes infringement. There is no declaration of what constitutes infringement in the present statute. It is not actually necessary because 

the granting clause [35 U.S.C. §154] creates certain 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 indicated by that of the exclusive right which it invades. 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 invention can be made available for the benefit of 

the infringer, and any person who participates in 

any wrongful appropriation of the invention becomes thereby a violator of the rights protected by 

the patent. 

(footnote omitted). This court has lost sight of this statutory foundation, although, as the Court explained in 

Bauer & Cie v. O’Donnell, 229 U.S. 1, 10 (1913), “Congress did not use technical or occult phrases” in “defining 

the extent of the rights and privileges secured to a patentee.” 

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 interactive 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 Resources this court held that the claims could not be directly 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 financial 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 contributory infringement by the provider of the claimed 

method. 

In Muniauction this court elaborated on BMC Resources, 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 participating in the system. At the trial the district court instructed 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 process. Are they aware of each other’s existence and 

interacting with each other in relation to the electronic auction process? Is there one party teaching, 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’ standard 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 bidders. 

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 performance. 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 infringement to be performed by one person or entity. 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. Infringement of a patented process or method cannot 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 entities, 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 necessarily divide the infringement between the necessary parties.” 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 programs to work together, and collaborated to sell the two 

programs as a unit.” 

I take note of the Linn cadre’s argument that ingenious patent claim drafting can avoid single-entity problems, 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 Dawson 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 copyright 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 vicarious infringement is inapposite in the cases before us, 

for no one entity performs all steps of the claimed invention. 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 respondeat 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 attributes 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 independent 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 Contributory Infringement Doctrine, 2009 BYU L. Rev. 783, 

786. Bartholomew points out at page 807 the differences 

between accomplice liability and contributory infringement: 

 As it stands currently, contributory infringement law does not require the strong showings of 

intent required for accomplice liability in criminal 

law. . . . [W]hile both contributory liability doctrines [e.g., induced and contributory infringement] allow the defendant’s mental state to be 

inferred through circumstantial evidence, infringement law takes a comparatively generous 

approach in determining what evidence is probative of knowledge of the underlying illegal act. 

Most importantly, accomplice liability places little 

stock in the actus reus requirement while contributory infringement decisions often hinge on 

whether the defendant’s actions were ‘material’ 

enough to justify liability. 

The LaFave treatise reiterates that “[c]onsiderable confusion exists as to what the accomplice’s mental state must 

be in order to hold him accountable for an offense committed by another.” Criminal Law §13.2, at 712 (5th ed. 

2010).2

 2 The majority also defends its adventure into uncharted infringement law, by reciting other assorted 

special statutes, such as the Hatch-Waxman Act’s artificial infringement provision for challenge to a patent when 

there is no case or controversy because there is no infringement, 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 presented by the cases before us [is] whether liability should 

extend to a party who induces the commission of infringing conduct.” Id. at 14. That is not the problem presented. 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 noninfringing 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 infringement, in which the court seeks support for its elimination 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 infringement. 
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 protection [of contributory infringement] is of particular importance 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 without 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 infringement

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 infringement 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 infringers. 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), explained that under common law “[contributory infringement] 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 inducement, 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 inducement 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 contributory 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 customers 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 contributory 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 foundational requirement of direct infringement, the majority 

creates a new, ill defined, and open-ended theory of liability 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 infringement without direct infringers, the court also misconstrues the 1952 Patent Act and its history. In 1948 

then attorney Giles S. Rich testified that “obvious infringement” should be subject to remedy, and that judicial 

decisions “appear to make it impossible to enforce [combination] patents in the usual case.” Contributory Infringement 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 Association) (“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. However, a year later Mr. Rich testified again, stating that: 

“The law always has been that, to hold anyone for contributory infringement, there must have been somewhere 

a direct infringement which was contributed to.” Contributory 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 infringement 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 infringement 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 contributory 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 legislative effort did any supporter or sponsor of the codification 

of indirect infringement in §271(b) and (c) refer to “practicing” the claimed invention or “the acts necessary to 

constitute direct infringement” as liberated from the 

requirement of proving direct infringement, as the majority 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 patent, when more than one entity participates in the infringement. 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 communities 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 design 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 inherently 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 negligence 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 patentese, it does not have the consequences given by my 

colleagues. Proper analysis is illustrated by Blair & 

Cotter, who point out the inapplicability to patent infringement. 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 conduct 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), “Infringement, 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 fundamentals apply here, and resolve all of the issues for 

which both factions of the court disrupt law and precedent. 

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 Liability (2000), as follows: 

§8. Factors for Assigning Shares of Responsibility 

 Factors for assigning percentages of responsibility 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 between 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 indifference 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 person’s conduct in causing the harm, and a comparison 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 proving a particular claim or defense. However, these 

factors are irrelevant even to apportionment if 

there is no causal connection between the referenced conduct and the plaintiff’s injuries. See 

Comment b. It should be noted that the mentalstate factors in this Section may be considered for 

apportioning responsibility even if they are not 

themselves causally connected to the plaintiff’s injury, as long as the risk-creating conduct to which 

they refer is causally connected to the injury. 

Apportionment of remedy for shared infringement permits consideration of the actual situation, and is particularly 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 jointtortfeasor, 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 plaintiff.”). 

Whether the infringement is direct or indirect, the allocation 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 infringing 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 infringement, 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 healthcare 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 singleentity 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 ‘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),” maj. op. 26–27, and 

holds that liability for inducement arises simply on “advis[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 infringement, 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 inducement-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 demonstrates 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 established 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 content provider domain, tagging the embedded 

objects of the page so that requests for the page 

objects resolve to the domain instead of the content provider domain; 

 responsive to a request for the given page received 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 domain instead of from the content provider domain. 

34. A content delivery method, comprising: 

 distributing a set of page objects across a network 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 content provider domain, tagging at least some of 

the embedded objects of the page so that requests for the objects resolve to the domain instead of the content provider domain; 

 in response to a client request for an embedded 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 performed 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 control” was extensively explored at trial, and the jury was 

instructed in accordance with BMC Resources: 

 If Limelight did not direct and control this action, then this substitution cannot be attributed to 

Limelight. And Limelight cannot, therefore, infringe. . . . 

 Again, the first [question] again is whether 

this method of getting to the Defendant content 

delivery network infringes any claim, and the second 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 responsible. But if Limelight did not direct and control, 

both are necessary, the modification at the content provider, then it cannot be deemed to infringe. 

 . . . 

 So, you should review the evidence, decide 

how the Limelight systems work, how does the interaction 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 Networks, 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 reconsideration 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 material 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 inducement-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 measure 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 infringement by Epic Systems, who licenses a software system 

that is designed for interactive use by healthcare providers and their patients. The patent, entitled “Electronic 

Provider—Patient Interface System,” is for “a communication system for providing automated, electronic communications 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 information 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 plurality of users to the provider for information, 

wherein the provider has established a preexisting medical record for each user; 

 enabling communication by transporting the 

communication through a provider/patient interface 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 communication with the central server through a providerpatient interface service center; 

 electronically comparing content of the communication with mapped content, which has been 

previously provided by the provider to the central 

server, to formulate a response as a static or dynamic 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 personalized 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 infringed 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].” McKesson, 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 requirement 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 today’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 extended 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 Cardiovascular Sys., Inc., 911 F.2d 670, 673 (Fed. Cir. 1990) (same). 

In 1952, Congress removed joint-actor patent infringement 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 tantamount 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 Supreme 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 “infringement” 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 unambiguous 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 Resources, 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 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).” 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 unsupported 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. Aarotech 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, 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. 

Section 271(a) defines infringement. H.R. Rep. No. 82-

1923, at 9 (1952) (“Section 271, paragraph (a), is a declaration 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 apparatus for use in practicing a patented process, 

constituting a material part of the invention, 

knowing the same to be especially made or especially 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 nevertheless 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 statutory form principles of contributory infringement

and at the same time eliminate this doubt and confusion. Paragraph (b) recites in broad terms that 

one who aids and abets an infringement is likewise 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. [Paragraph (c)] is much more restricted than many proponents 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 conduct. 

Reading subsection (b) in light of subsection (a) is a 

straightforward exercise. Section 271(a) defines infringement, and, in turn, §§ 271(b) and (c) establish 

indirect infringement liability for one who “actively induces 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 articulation 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 infringe] 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 impermissibly 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 infringing.” Maj. Op. 26. Contrary to the majority’s statement, 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 principles 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 appropriate.” Powerex Corp. v. Reliant Energy Servs., Inc., 551 

U.S. 224, 232 (2007) (emphasis added). “The interrelationship 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 explicitly 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 majority’s attempt to distance Aro from this case is unconvincing. 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., liability, 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 contributory 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).” (emphasis 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 infringement 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 interpretation 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 infringement. As the majority itself recognizes, “[p]rior to the 

1952 Act, inducement and contributory infringement were 

both referred to under the rubric of contributory infringement.” Maj. Op. 17 (citing Giles S. Rich, Infringement 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 something called direct infringement, and to that direct infringement 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 interpretation. 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 principle 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 reasons which need not be restated, such individual expressions 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 infringement under § 271(b) has occurred. See Maj. Op. 16-17. 

The problem with that approach is that there is no statutory basis for concluding that such independent acts 

constitute infringement and no basis for asserting a cause 

of action for infringement against any of those independent 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 misplaced 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 product. Thus, the statement in Fromson can be read to relate 

only to the product claims. Third, in the sentences immediately 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 construction 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 perspective, increased protection for discoveries of diagnostic 

laws of nature is desirable”). 

3. Congress’s Addition of §§ 271(e)(2), (f), and (g) Exemplify 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 majority 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 encompassed 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), interpreting § 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 (emphasis 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 infringement. 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 majority overstates and improperly analogizes to fundamental 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 acquitted on the relevant charges in a separate trial, the Supreme 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 underlying 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 proposition 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. Gleason, 616 F.2d 2, 20 (2d Cir. 1979), and United States v. 

Rapoport, 545 F.2d 802, 806 (2d Cir. 1976)). The appropriate 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 aiding and abetting or “inducement”], however, are 

somewhat different [than § 2(b)]. Whereas § 2(a) 

speaks in terms of procuring or aiding and abetting the commission of an “offense,” and hence requires 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 “offense,” 35 U.S.C. § 271(b) requires an actual “infringement.” 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 Congress. 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 majority’s “liability-free direct infringement to support inducement” 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 designed 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 . . . .” (emphasis added)); Rapoport, 545 F.2d at 806 (same). In 

contrast here, the tort of patent infringement is statutorily defined in § 271(a) as the unauthorized “mak[ing], 

us[ing], offer[ing] to sell, or sell[ing] any patented invention.” § 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 Shuttlesworth, 373 U.S. at 265.

The majority also errs in stating that “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.” Maj. Op. 24 (emphasis added). The 

majority cites the Restatement of Torts (“1st Restatement”) § 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 defendant’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 commission 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] unreasonably restrictive”); Learjet Corp. v. Spenlinhauer, 901 

F.2d 198, 203 (1st Cir. 1990) (plaintiff stated a claim for 

fraudulent misrepresentation based on defendant’s intentional 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 substance 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 withhold 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 fraudulent 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 misrepresentation; and not addressing the liability of the landowner 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. Parmenter, 192 N.W. 429, 431 (Iowa 1923) (affirming a directed 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 witness 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 omitted)); 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 liability 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, tortious, or a breach of duty. See First Restatement § 876. 

B. The Single Entity Rule for Direct Infringement Liability 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 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)). 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 invention. . . . [A] direct infringer’s knowledge or intent is 

irrelevant.” (emphasis added)). Because of the strictliability 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, protects 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 infringement, 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 defendants 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 operating 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 infringement to reach independent conduct of multiple actors 
AKAMAI v. LIMELIGHT & MCKESSON v. EPIC 23

would subvert the statutory scheme for indirect infringement.”). 

Limelight and many amici argue that the word “whoever” 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 practices 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 wellestablished 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. Sutherland, 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 traditional 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 contends that Filtrol and Texaco split between them the 

performance of the four steps of the claim. . . . We question 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., Divided Infringement Claims, 33 AIPLA Q.J. 255, 258 

(2005) (“[C]ourts have imposed liability for direct infringement where another person acts as an agent of the 

alleged infringer.” (emphasis added)). Applying traditional principles of vicarious liability to direct infringement 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 under § 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 . . . .” (emphases 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 enterprises 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 enterprise or venture, while acting within the scope 

of agency created by the enterprise, may be imputed 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 member 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 members; and (4) an equal right to a voice in the direction of the enterprise, which gives an equal right 

of control. Whether these elements exist is frequently a question for the jury, under proper direction 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 insufficient evidence of direction or control, id. at 1380-81, even 

though the two accused entities “formed a strategic partnership, 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 satisfied 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 liability 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 specifically 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 infringement. 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 performs 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 contractual 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 infringement 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 requirement, 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 contributory infringement and inducement, as Congress envisioned, 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 attributable 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. Accordingly, I would affirm the district court’s grant of Limelight’s motion for JMOL of non-infringement under 

§ 271(a). 

I would also reinstate the portion of the panel’s opinion addressing Limelight’s alternative ground for affirmance 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 represent the vicarious actions of their doctors. Nor is there 

anything to indicate that the MyChart health care providers 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 noninfringement.