Academic journal article Santa Clara High Technology Law Journal

Joint Infringement of Patent Claims: Advice for Patentees

Academic journal article Santa Clara High Technology Law Journal

Joint Infringement of Patent Claims: Advice for Patentees

Article excerpt

Abstract

Liability for direct patent infringement generally requires the presence of an entity that directly infringes all the limitations in a patent claim. But, in some situations a single direct infringer may not be present. There are two judicially developed theories of joint infringement that address such situations: the "agency" theory and the "some connection" theory. This article explores both theories and provides some practical advice for patentees who need to avail themselves of one or both joint infringement theories.

I. INTRODUCTION

In order to establish liability for direct patent infringement under 35 U.S.C. [section] 271(a), (1) a patentee must show either that an infringing product contains all the limitations in the allegedly infringed patent claim or that an infringer performs each and every claimed step of the patented process. (2) This requirement does not generally present a problem to most patentees because the patentee knows the identity of the entity that is making, using, selling, offering to sell or importing the claimed invention. (3) But, there are two situations in which a single direct infringer may not be present. First, the patentee's competitors may have arranged their affairs so that no one entity infringes every claim limitation or process step. (4) Second, a patentee's method claims may have been drafted such that different entities must perform different steps. (5) In this case, a patentee will need to impute the actions of one or more entities to one particular entity in order to show that every process step is infringed. (6) A patentee in these situations may want to avail itself of a theory of indirect infringement by arguing that the entity is either actively inducing another to infringe or is contributing to another's infringement. (7) Although these theories may seem appealing, a patentee cannot resort to them unless it shows that a direct infringer is present because direct infringement is considered a prerequisite for establishing liability under both indirect infringement theories. (8)

But, a patentee is not without recourse because of two judicially developed theories of joint infringement: the "agency" theory and the "some connection" theory. The "agency" theory was first recognized in the 1940s, (9) while the "some connection" theory is a much more recent judicial development. (10) The "some connection" theory reduces the traditional agency law focus on control and allows enforcement against a broader range of infringing activities. In a pair of recent cases the Court of Appeals for the Federal Circuit ("CAFC") has expressed support an expansive view of joint infringement. (11) This article examines the key district court cases that discuss these theories and the related CAFC jurisprudence. The article concludes with some advice for patentees who need to avail themselves of a joint infringement theory. Generally, a patentee will be able to rely on the "agency" theory, as most courts are comfortable applying agency principals and determine factual questions related to the extent of "control." But, a patentee should be able to convince a court to adopt the "some connection" theory given the recent jurisprudence surrounding that theory.

II. THE "AGENCY" THEORY OF JOINT INFRINGEMENT

The "agency" theory of joint infringement is combination of two common law principles. The first principle is that patent infringement can be considered as type of tort. (12) The second principle, from agency law, is that a master or principal may be liable for his servant or agent's torts. (13) Given that the hallmark of an agency relationship is "control or [] the right of control," (14) courts applying the "agency" theory appropriately focus on the level of control exercised by one infringing entity over the other infringing entities. (15) This focus on control is apparent from the very first case to recognize the "agency theory," Crowell v. …

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