In its 2007 decision in BMC Resources, Inc., v. Paymentech, L.P., the Federal Circuit attempted to clarify the law regarding liability for direct patent infringement under § 271(a) where the steps of a patent claim are performed by more than one party. Specifically, the Federal Circuit held that a defendant is not responsible for steps in a patent claim performed by a third party, and consequently is not liable for direct patent infringement where the defendant did not “control or direct each step of the patented process.” However, the Federal Circuit provided only limited guidance regarding how to determine whether a defendant has exerted sufficient control or direction over a third party such that the defendant could be liable for the acts of the third party.
In 2008 in Muniauction, Inc. v. Thomson Corporation, the Federal Circuit may have introduced some unintended confusion into the joint infringement analysis by stating that the plaintiff had failed to identify a legal theory where the defendant “might be vicariously liable for the actions of” the third parties that performed some of the steps of the patented methods. At least one district court since has read the holding of Muniauction as requiring a patentee to prove that a defendant is vicariously liable for the actions of a third party in order to satisfy the “control or direction” test.
Liability for “joint” infringement should not be limited to situations in which a plaintiff can prove that a defendant is vicariously liable for the acts of third parties, and agency law provides significant guidance regarding situations in which “control or direction” should be found. This article suggests tests for simplifying the determination as to whether a defendant has satisfied the “control or direction” test. Cases involving acts performed by a defendant’s customers should be viewed differently from cases involving other business relationships, such as those between a defendant and suppliers, subcontractors, or other vendors. Rarely will a defendant be found to assert sufficient “control or direction” over its customers such that steps performed by customers will support an infringement claim against the defendant. For other types of business relationships, a test consisting of two questions would help courts and practitioners determine whether there is sufficient control or direction over the third party’s performance of a step in a patent claim such that the alleged infringer should be responsible for the third party’s acts:
Does the defendant’s alleged “control or direction” relate to the specific technology accused of infringement?
If so, did the defendant require the third party to perform the relevant limitations of the claim in the manner provided for in those limitations?
If the answer to both of these questions is “yes,” then the alleged infringer should be held liable for steps performed by third parties. Applying this test would greatly simplify the “control or direction” inquiry and lead to more consistent results in cases involving joint infringement.
- patent joint infringement
Available at: http://works.bepress.com/keith_jaasma/3/