Docket Nos. 2009-1372, 2009-1380, 2009-1416, 2009-1417
PROST, LINN, MOORE
November 16, 2015
Brief Summary: DC claim constructions affirmed (Limelight cannot argue for a construction at the jury instruction stage different from that framing “the bulk of the trial…and directed by the Markman construction to which it agreed”). Lost profits analysis also affirmed (expert properly considered all of the necessary factors regarding the parties’ products and sales).
Summary: This opinion follows the Aug. 13, 2015 reversal of the DC’s JMOL regarding divided infringement (affirming DC judgment of non-infringment of the ‘413 and ‘645 patents but reversing the DC grant of Limelight’s motion for JMOL of noninfringement of the ‘703 patent; “Section 271(a) is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, as the vacated panel decision held…Rather, to determine direct infringement, we consider whether all method steps can be attributed to a single entity.”) Here, the FC panel considered the remaining issues remaining from Limelight’s cross-appeal: whether the DC erred in construing “tagging”, whether it properly constructed “optimal” and correctly instructed the jury regarding the same, and whether it should have allowed Akamai to present a lost profits theory based on the testimony of its expert. Regarding “tagging”, the FC panel denied Limelight’s argument that it should include “prepending” as an improper attempt to import a “preferred” method into the independent claims (at least one dependent claim defines limits “tagging” to “prepending”) (Innova/Pure Water, FC 2004 (“even where a patent describes only a single embodiment, claims will not be read restrictively unless the patentee has demonstrated a clear intention to limit the claim scope using words or expressions of manifest exclusion or restriction”)). The FC panel also concluded Limelight cannot argue for a construction at the jury instruction stage different from that framing “the bulk of the trial…and directed by the Markman construction to which it agreed”. The opinion also explained that the term “optimal server” did not appear in the patent and is “[i]nstead…nested within the parties stipulated claim constructions”. It found no error with the DC’s jury instructions regarding the term which did not “require the jury to construe the term”, as Limelight argued, and that “Akamai’s use of ‘optimal’ and ‘best’ in the prior litigation does not estop Akamai from arguing that ‘optimal’ allows for serving from other than a single composite server because the point at issue in the discussions cited was distinct from the issue here.” Limelight also argued the DC erred in allowing lost profits because Akamai did not “show a causal connection between Limelight’s infringement and Akamai’s lost profits.” The FC panel found, however, that Akamai’s expert properly considered all of the necessary factors regarding the parties’ products and sales, noting that he conceded “he ‘had to make a judgment call based on the attributes and come to a conclusion what the adjustments would be” (“Dr. Ugone’s 25% adjustment for market elasticity was sufficiently grounded in economic principles for the district court to allow it.”) Limelight’s arguments in the cross-appeal were therefore found to lack merit and the case remanded to reinstate the jury verdict and damages award (and the DC judgment of non-infringement of the ‘413 and ‘645 patents re-confirmed).