Judge Andrews issued an interesting opinion on Wednesday discussing the level of control necessary for divided infringement -- an issue that has not come up much in the district.
As the Federal Circuit laid out in Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, (Fed. Cir. 2015), divided infringement requires the parties that collectively perform all of the method steps to be part of a joint enterprise, or for one of them to "direct or control the other's performance." Id. at 1022–23.
This "direct or control" requirement has historically been a pretty good grounds for motions to dismiss or summary judgment in the district. In the 5 years since Akamai, 3 such motions have been granted and none have been denied.
That streak ended on Wednesday with Judge Andrews' opinion in Sprint Comm's Co. L.P. v. Atlantic Broadband Finance, LLC, C.A. No. 18-362-RGA, D.I. 412 (D. Del. Mar. 24, 2021). In that case, Atlantic Broadband had a contract with its alleged co-infringer that required it to provide a broadband connection service. The contract between them required the defendant to have the equipment available to perform this service in a way that would complete the patented method, but did not actually require it to be used, and did not otherwise specify how the service would be provided. The parties agreed that this created a "theoretical possibility that [the alleged co-infringer] could meet its contractual obligations . . . without using the equipment it was required to have." Id. at 3. Thus, Atlantic broadband moved for summary judgment of non-infringement arguing that it did not have the necessary control to be the "single entity that should be liable for direct infringement." Id.
Judge Andrews denied the motion in a brief opinion, ruling that "[a] reasonable jury could conclude that [Atlantic Broadband] contracted for N2P to provide the missing step in the infringing method."
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