Federal Circuit requires agency relationship or contractual obligation for joint infringement

To establish infringement of a method claim, a patent holder must show that all of the recited steps in the claim are performed by a defendant.  If the recited steps are not performed by a single entity, but by the defendant acting in concert with another party, the patent holder may still show “joint infringement” if the defendant controls or directs the activities of another party.

In Akamai Technologies v. Limelight Networks, the Federal Circuit looked at what types of activities qualify as directing or controlling the activity of a another party.  The court opted for a bright-line rule that requires either a principal-agent relationship or a contractual obligation to perform the steps of the claim.

More details of Akamai Techs. v. Limelight Networks after the jump.


Adaptation of prior art bidding system to the web obvious under KSR and Leapfrog

In a decision Monday, the Federal Circuit reversed a district court's permanent injunction and denial of judgment as a matter of law in a patent infringement case.  A jury determined the asserted claims of the patent were not obvious and that the defendant willfully infringed, and awarded $38.5 million in damages, which the district court enhanced to nearly $77 million based on the willful infringement finding.  

After the jury reached its verdict, but before the district court ruled on the defendant's motion for judgment as a matter of law, the Supreme Court decided KSR.  The district court considered KSR, but held substantial evidence supported the jury's conclusion of nonobviousness in part based on secondary indicia.

On appeal, the Federal Circuit held some of the asserted claims were obvious as a matter of law under KSR and Leapfrog.  The plaintiff's expert testified that the prior art contained all the elements of several asserted claims with the exception of perform the method using a web browser.  The Federal Circuit noted the facts showed web browser technology was well-known at the time the patent was filed.  Under KSR, "when a work is available in one field of endeavor, design incentives and other market forces can prompt variations of it, either in the same field or a different one," and in this case, additional prior art noted the desirability of the combination.  As a result, the defendant had shown a prima facie case of obviousness.  While the plaintiff asserted secondary indicia of nonobviousness rebutted this showing, the court held much of the evidence lacked a nexus with the claims, and the remainder was not sufficiently persuasive to overcome the strong prima facie case of obviousness.

The court then addressed whether the defendant infringed the remaining claims.  The infringement claim was based on a theory of joint infringement, and while the appeal was pending, the Federal Circuit decided BMC Resources, clarifying the standard for joint infringement.  Under BMC Resources, one party must control or direct all steps of the claimed method in order for joint infringement to be found.  Here, there was no such "mastermind," so the Federal Circuit held the remaining claims were not infringed.

More detail of Muniauction, Inc. v. Thomson Corp. after the jump.


Federal Circuit clarifies standard for proving joint infringement

The Federal Circuit issued a decision today affirming a district court's finding of noninfringement when a defendant neither carried out all of the steps of a method claim nor was responsible for the actions of the parties that did carry out all steps to the method claim.  In doing so, the court clarified the proper standard for joint infringement by multiple parties of a single claim.

More detail of BMC Res., Inc. v. Paymentech, L.P. after the jump.


Another patent invalid after KSR, with help from an innovative online litigation strategy

Peter Zura has an interesting post about a case in the Eastern District of Texas (one of the most popular districts for patent cases to be filed) where a patent was held to be both anticipated and, failing that, obvious in light of KSR.  The court also addressed the concept of joint infringement, which the Federal Circuit has yet to address in detail, and found that a showing of agency or concerted action is not required to find joint infringement.  Instead, a contractual relationship may be sufficient.

Interestingly, one defendant in this case solicited prior art from members of the public on its blog to help invalidate the patent.  Apparently the submissions received helped the invalidity case[Update (8/30):  The New York Times has a story about the prior art search by the defendant.]  This is an interesting litigation strategy, and one that could be used by defendants in other cases as a way to expand the search for potentially relevant prior art.

Quotes from the court's decision in Advanceme Inc. v. RapidPay, LLC after the jump.


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