Ramifications of Joint Infringement Theory on Emerging Technology Patents

Two cases decided by the U.S. Court of Appeals for the Federal Circuit articulate the standards for joint infringement. In BMC Resources, Inc. v. Paymentech, L.P., the court ruled that to find liability in situations where steps of a method claim are performed by multiple parties, the entire method must be performed at the control or direction of the alleged direct infringer — the mastermind. Approximately one year later, in Muniauction, Inc. v. Thomson Corp., the Federal Circuit clarified that “the control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.” District courts have attempted to apply the holdings of BMC Resources and Muniauction in the two years following the Federal Circuit’s decisions. In deciding their cases, district courts have focused on how the asserted claims are drafted and the relationships between the accused infringer and third parties. Absent significant evidence of how an accused infringer controlled third parties, patent holders have found it difficult to support claims of infringement under a joint infringement theory. Further, courts have suggested that carefully drafted claims directed to a single actor would eliminate the need for patent holders to rely solely on joint infringement theory