AKAMAI TECHNOLOGIES, INC., THE MASSACHUSETTS INSTITUTE OF TECHNOLOGY, Plaintiffs-Appellants
LIMELIGHT NETWORKS, INC., Defendant-Cross-Appellant
Appeals from the United States District Court for the District of Massachusetts in Nos. 06-CV-11585, 06-CV-11109, Judge Rya W. Zobel.
SETH P. WAXMAN, Wilmer Cutler Pickering Hale and Dorr LLP, Washington, DC, argued for plaintiffs-appellants. Also represented by THOMAS G. SAUNDERS, THOMAS G. SPRANKLING; MARK C. FLEMING, ERIC F. FLETCHER, LAUREN B. FLETCHER, BROOK HOPKINS, Boston, MA; DAVID H. JUDSON, Law Offices of David H. Judson, Dallas, TX; DONALD R. DUNNER, ELIZABETH D. FERRILL, Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, Washington, DC; JENNIFER S. SWAN, Palo Alto, CA; ROBERT S. FRANK, JR., G. MARK EDGARTON, CARLOS PEREZ-ALBUERNE, Choate, Hall & Stewart, LLP, Boston, MA.
AARON M. PANNER, Law Office of Aaron M. Panner, P.L.L.C., Washington, DC, argued for defendant-cross-appellant. Also represented by JOHN CHRISTOPHER ROZENDAAL, MICHAEL E. JOFFRE, Kellogg, Huber, Hansen, Todd, Evans & Figel, P.L.L.C., Washington, DC; MICHAEL W. DE VRIES, ALLISON W. BUCHNER, Kirkland & Ellis LLP, Los Angeles, CA; YOUNG JIN PARK, New York, NY; DION D. MESSER, Limelight Networks, Inc., Tempe, AZ.
JEFFREY I.D. LEWIS, Fried, Frank, Harris, Shriver & Jacobson LLP, New York, NY, for amicus curiae American Intellectual Property Law Association. Also represented by KRISTIN M. WHIDBY, Washington, DC; LISA K. JORGENSON, American Intellectual Property Law Association, Arlington, VA.
SCOTT A.M. CHAMBERS, Porzio, Bromberg & Newman, P.C., Washington, DC, for amicus curiae Biotechnology Industry Organization. Also represented by CAROLINE COOK MAXWELL; HANSJORG SAUER, Biotechnology Industry Organization, Washington, DC.
CHARLES R. MACEDO, Amster Rothstein & Ebenstein LLP, New York, NY, for amicus curiae Broadband iTV, Inc. Also represented by JESSICA CAPASSO.
PAUL H. BERGHOFF, McDonnell, Boehnen, Hulbert & Berghoff, LLP, Chicago, IL, for amicus curiae Intellectual Property Owners Association. Also represented by PHILIP S. JOHNSON, Johnson & Johnson, New Brunswick, NJ; KEVIN H. RHODES, 3M Innovative Properties Co., St. Paul, MN; HERBERT C. WAMSLEY, Intellectual Property Owners Association, Washington, DC.
CARTER G. PHILLIPS, Sidley Austin LLP, Washington, DC, for amicus curiae Pharmaceutical Research and Manufacturers of America. Also represented by JEFFREY P. KUSHAN, RYAN C. MORRIS; DAVID E. KORN, Pharmaceutical Research and Manufacturers of America, Washington, DC; DAVID R. MARSH, LISA A. ADELSON, Arnold & Porter, LLP, Washington, DC; ROBERT P. TAYLOR, MONTY AGARWAL, San Francisco, CA.
DEMETRIUS TENNELL LOCKETT, Townsend & Lockett, LLC, Atlanta, GA, for amici curiae Nokia Technologies Oy, Nokia USA Inc.
DONALD R. WARE, Foley Hoag LLP, Boston, MA, for amicus curiae The Coalition for 21st Century Medicine. Also represented by MARCO J. QUINA, SARAH S. BURG.
Before PROST, Chief Judge, LINN and MOORE, Circuit Judges.
Linn, Circuit Judge.
This case first came to this court after, inter alia, a jury verdict finding Akamai's U.S. Pat. No. 6,108,703 (" '703 patent" ) not invalid and directly infringed by Limelight, followed by the entry of judgment as a matter of law (" JMOL" ) overturning the jury's infringement verdict on the basis of divided infringement. Akamai Techs., Inc. v. Limelight Networks, Inc. ( Akamai II ), 614 F.Supp.2d 90 (D. Mass. 2009). After several rounds of appeals and remands, culminating with the en banc court's reversal of the district court's JMOL determination on the divided infringement issue, the case returns to this panel, which is tasked with resolving " all residual issues" in the appeal and cross-appeal. Akamai Techs., Inc. v. Limelight Networks, Inc. ( Akamai IV ), 797 F.3d 1020, 1025 (Fed. Cir. 2015) (en banc).
On this record, the only issues remaining stem from Limelight's cross-appeal, which argued alternative grounds for overturning the jury's verdict of infringement and challenged the damages award. Specifically, three issues remain to be adjudicated. First, whether the district court erred in construing the claim term " tagging."  Second, whether the district court properly constructed the term " optimal," and properly instructed the jury on the construction. Third, whether the district court erred in allowing Akamai to present a lost profits theory based on the testimony of its expert.
Because the district court did not err in its claim constructions and appropriately instructed the jury, and because we find no error in the district court's allowance of Akamai's lost profits expert, we decline Limelight's invitation to find an alternate basis to overturn the jury verdict on infringement and its damages award. Accordingly, we reiterate the en banc court's reversal of the district court's grant of JMOL of non-infringement and remand with instructions to reinstitute the jury's original verdict and damages award. We also confirm our previously reinstated affirmance of the district court's judgment of non-infringement of U.S. Patent Nos. 6,553,413 (the " '413 patent" ) and 7,103,645 (the " '645 patent" ).
A. The Technology and the Nature of the Dispute
A detailed description of the technology and the claims at issue in this case is set forth in the prior reported opinions of this court and the Supreme Court and will not be repeated except to the extent germane hereto. See Akamai IV, 797 F.3d 1020; Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S.Ct. 2111, 189 L.Ed.2d 52 (2014); Akamai Techs., Inc. v. Limelight Networks, Inc. (Akamai III), 629 F.3d 1311 (Fed. Cir. 2010).
B. Prior Proceedings
In 2006, Akamai sued Limelight in the United States District Court for the District of Massachusetts asserting infringement of claims 19-21 and 34 of the '703 patent, along with certain claims of the '413 and '645 patents. After the district court's first claim construction order, Akamai Techs., Inc. v. Limelight Networks, Inc., 494 F.Supp.2d 34 (D. Mass. 2007), Akamai stipulated that it could not prove infringement of the '645 patent under the district court's construction. The district court thus entered judgment of non-infringement. The district court subsequently entered summary judgment of noninfringement of the asserted claims of the '413 patent.
As relates to the '703 patent, the parties stipulated to a construction of " tagging" in claims 17, 19, and 34 of the '703 patent as " providing a 'pointer' or 'hook' so that the object resolves to a domain other than the content provider domain." Akamai Techs., Inc. v. Limelight Networks, Inc. (Akamai I), No. 06-11109, 2008 WL 697707, at *1 (D. Mass. Feb. 8, 2008). The meaning of this term was not disputed until Limelight requested a jury instruction explaining that tagging could only be accomplished by " either prepending or inserting a virtual server hostname into the URL," and filed Rule 50 motions for judgment of non-infringement because the accused products did not tag in this way. The district court denied the requested jury instruction and the Rule 50 motions.
The parties also stipulated that " to resolve to a domain other than the content provider domain" in claims 17, 19, and 34 of the '703 patent should be construed as " to specify a particular group of computers that does not include the content provider from which an optimal server is to be selected." Akamai I, 2008 WL 697707 at *1 (emphasis added). However, the parties disagreed on the meaning of the word " optimal" in the construction, with Limelight arguing that a single optimal server must be selected, and Akamai arguing that several servers could be " optimal" if they each met some criteria. Id. The district court construed " optimal server" as " requir[ing] the selection of a content ...