Academic journal article The Journal of High Technology Law

The Changing Landscape of Joint, Divided and Indirect Infringement - the State of the Law and How to Address It

Academic journal article The Journal of High Technology Law

The Changing Landscape of Joint, Divided and Indirect Infringement - the State of the Law and How to Address It

Article excerpt

Cite as 12 J. High Tech. L. 65 (2011)

I. Introduction

Patents are often written in a manner such that one part of a process is required to be performed by one person or entity and another part of the process is required to be performed by another person or entity. The infringement of these claims is sometimes referred to as "joint" or "divided" infringement. These divided claims have presented significant issues for litigants and courts to deal with in patent cases and have serious repercussions for how claims should be drafted. In particular, a number of cases were decided by the Federal Circuit between 2007 and 2011. These cases set forth various rules for assessing infringement of divided claims. The rules are complex and treat claims quite differently depending on how they were drafted, including treating "method" claims differently than "system" claims. Furthermore, some judges of the Federal Circuit have recently questioned whether the cases were correctly decided and whether they are inconsistent. Accordingly, the Federal Circuit quite recently decided to review two of those cases en banc--Akamai Techs., Inc. v. Limelight Networks, Inc., (1) and McKesson Techs., Inc. v. Epic Systems Corp. (2) These cases may change or clarify some of the rules regarding joint infringement. In the meantime, practitioners must continue to consider and adapt to the rapidly changing landscape of this area of the law.

Many cases with divided claims also include allegations of indirect infringement, which is a separate doctrine, and recent cases have also changed the standards for providing indirect infringement. Consequently, this article examines the law as it is today and discusses the implications of the case law for issues regarding opinions of counsel, litigation, contract counseling and claim drafting, all with the understanding that we must practice in a world of uncertainty in this area of law.

II. A Practical Example

The complexities of divided infringement can perhaps best be addressed and understood by using a practical example. Consider a patent that includes a four-step process that occurs using a networked computer. The first 3 steps are performed by the company that sells the product and software to the user. The fourth step is performed by the user on his computer. This is essentially a simplified, abstract description of the invention described in Centillion Data Sys., LLC v. Quest Comms. Int'l, Inc., (3) which was a system for collecting, processing, and delivering information from a service provider, such as a telephone company, to a customer. (4) On the "back-end," the company stores records (step 1), generates reports from those records (step 2), and transfers those reports and records to a user (step 3). (5) On the "front-end," the user performs additional processing of the reports and records sent to him (step 4), presumably using software on his home computer. (6)

First, assume that the patent claim is written such that the invention is a "method" with these four steps. Is there infringement if an accused product is used this way? As the law stands today, the answer is no, assuming the user is just a customer of the company that sells the software and performs the back end steps. (7) Because one person does not perform each and every step, there is no direct infringement. (8)

Second, assume that the patent claim is written such that the invention is a "system" with these four steps. Is there infringement if an accused product is used this way? This changes the result. (9) As the law stands today, there is infringement by the user in this situation. (10) There is no direct infringement by the company, however, unless the user has an agency relationship with the company or other contractual obligation to perform the steps. (11) There may be indirect infringement, as discussed below. (12)

Third, assume that the patent claim is again written as "method," but now it only includes the first three steps, not the fourth. …

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