obvIPat - Obviously Patentable

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Posts Tagged ‘infringement’

Limelight Networks v. Akamai Technologies: No Infringement by Committee

by Orlando Lopez

The recent US Supreme Court decision in Limelight Networks v. Akamai Technologies relates to joint infringement. Usually, infringement of a method or process claim in a patent occurs when one entity practices all the steps in the method or process. However, in many systems, for example communication systems, the system includes a server that is owned by one entity, and client systems (Blackberry®s for example) that are owned by another entity. A method or process claim, if written in the most straightforward and logical manner, would be performed in part by the entity that owns the server and in another part by the entity that owns the client system. Infringement of that method or process claim would require joint infringement, where the two entities cooperate in performing the steps of the process. Under present law, direct infringement may not be possible since present law requires that one entity perform all steps in the method or process unless one party is under control or direction of the other party.

Akamai owns a patent having a claim for a method for delivering electronic data using a content delivery network (CDN). Limelight operates a CDN. When Akamai sued Limelight Networks for infringement, Limelight Networks claimed noninfringement since Limelight performs all the steps of the method claim except for one: the step of “tagging” is performed by the user. On appeal, the US Court of Appeals for the Federal Circuit, in a ruling including the entire court, found that, although direct infringement may not have been possible, Limelight could be liable as an inducer of infringement. As stated in the US Supreme Court decision in Limelight Networks v. Akamai Technologies, the entity that owns the server cannot be considered to be inducing infringement since inducing infringement requires that someone be infringing the entire claim.

Unless there is a different ruling on direct infringement, and that ruling stands the test of the US Supreme Court, patent drafters will have to write separate claims: one set of claims where the actions occur only at the server, and another set of claims were the actions occur only at the client. The structure of such claims is awkward, the number of claims is twice that needed, and the Examiner will attempt restriction.

Until the law changes, we will need to write method claims that are performed by only one party.


The Rapper and The Slugger

by Bruce Jobse

Can it be that the intense rivalry between two of Major League Baseball’s oldest and most famous teams, the Boston Red Sox and the New York Yankees, which is already global in nature, has spilled over into the world of intellectual property? Apparently so.

Last week notorious Yankee fan and successful rapper/producer Jay-Z brought an action in US District Court in New York alleging that the online advertising of a nightclub named “Forty Forty” in Santo Domingo by David “Big Papi” Ortiz, one of the Red Sox heavy hitters, infringes Jay-Z’s trademark for “40/40 Club” as used on a chain of sports-oriented nightclubs. Seems that Big Papi was photographed a few seasons back, partying at the New York location of the 40/40 Club. That alone was probably enough to irritate local patrons, including New York Yankee Alex Rodriguez. But apparently Mr. Ortiz’s club opening on his native Dominican Republic turf with an alleged confusingly similar mark was more inflammatory to Jay-Z than watching Mr. Rodriguez being called out after slapping the ball from Bronson Arroyo’s glove during the 2004 ALCS playoffs.

So is this high and outside fastball aimed towards Big Papi’s ear really about the Lanham Act and trademark infringement? Although the 40/40 Club has locations in various cities in the US as well as Japan and China, it seems that Ortiz may take a swing at hitting this one out of the US District Court’s jurisdiction. It will be interesting to hear the official call, especially since Jay-Z is seeking an injunction. One thing for sure, the fans will enjoy watching both benches of lawyers rumble.