A Joint Patent Infringement Doctrine? Still Holding Our Breath
Summary: Although teasing about things to come, the Court of Appeals for the Federal Circuit (CAFC) adverted to, but then sidestepped, the question of whether two separate entities can jointly infringe a patent.
If you're a patent practitioner, this issue has likely come across your radar screen at some point. Say a business performs steps A and B of a patented process, and another company performs steps C and D. Neither company would appear to be a direct infringer of a patent claim reciting steps A, B, C, and D. And as long as no one is directly infringing the claim by practicing all steps A through D, neither company should be held liable for contributory or induced infringement of the claimed process either. That's where the theory of "joint" or "divided" patent infringement liability comes into play.
In PharmaStem Therapeutics, Inc. v. Viacell, Inc., No. 05 Civ. 1490 and 1551 (Fed. Cir. July 9, 2007) (Newman, J., dissenting), the CAFC acknowledged that the parties and the district court discussed the issue of joint infringement in the context of determining whether there was infringing conduct sufficient to serve as a predicate for a finding of contributory infringement. Under that theory, the court said, "two related parties are both deemed liable for direct infringement of a method patent when each performs some steps of the claimed method." However, while recognizing that the viability and scope of the joint theory of liability has been the subject of considerable debate, the CAFC said the issue was not squarely raised on appeal such that it could address the merits of the theory, leaving the liability "loophole" in tact.
So what about the tease mentioned above? The CAFC pointed out that the joint liability issue has been directly appealed in another case--BMC Resources, Inc. v. Paymentech, L.P., No. 2006-1503--currently pending before the CAFC. Perhaps, then, the bar will have some clarity soon.
Comments:
- Other materials addressing the joint liability issue:
- On Demand Mach. Corp. v. Ingram Indus., Inc., 442 F.3d 1331, 1334 (Fed. Cir. 2006);
- Cross Med. Prods., Inc. v. Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1311 (Fed. Cir. 2005);
- Kristin E. Gerdelman, Subsequent Performance of Process Steps by Different Entities: Time to Close Another Loophole in U.S. Patent Law, 53 Emory L.J. 1987 (2004);
- Mark A. Lemley et al., Divided Infringement Claims, 33 AIPLA Q.J. 255 (2005);
- Sriranga Veeraraghavan, Joint Infringement of Patent Claims: Advice for Patentees, 23 Santa Clara Computer & High Tech L.J. 211 (2006).
UPDATE: See related post here, concerning the Federal Circuit's BMC Resources, Inc. v. Paymentech, L.P. opinion.
