Absent a principal-agent relationship, a contractual arrangement, or a joint enterprise, direct infringement under § 271(a) does not incorporate joint tortfeasor liability. Here, for example, although the accused infringer maintained servers that performed part of the claimed method and instructed its customers on how to perform the remainder of the claimed method, no direct infringement was found to exist because there was no agency or other vicarious relationship between the accused infringer and its customers (and, hence, no indirect infringement could be found without any corresponding direct infringement). “[D]irect infringement liability of a method claim under 35 U.S.C. § 271(a) exists when all of the steps of the claim are performed by or attributed to a single entity.” It may therefore be best to ensure that all method claims can be infringed by a single entity.
Background / Facts: On remand from the Supreme Court having decided against the doctrine of divided infringement via inducement, this case shifts its focus to other theories of joint tortfeasor liability. The accused infringer maintains servers that perform part of the claimed method and instructs its customers on how to perform the remainder of the claimed method. It is undisputed that in order for the accused infringer to be held liable for indirect infringement, there must be direct infringement of the claimed method under § 271(a).
Issue(s): Whether § 271(a) incorporates joint tortfeasor liability.
Holding(s): No. “[D]irect infringement liability of a method claim under 35 U.S.C. § 271(a) exists when all of the steps of the claim are performed by or attributed to a single entity—as would be the case, for example, in a principal-agent relationship, in a contractual arrangement, or in a joint enterprise.” As a matter primarily of statutory interpretation, the court based its decision on the statutory scheme of § 271, the divided infringement case law, and the errors in importing joint tortfeasor liability into § 271(a). Fundamentally, because “[a] patentee can usually structure a claim to capture infringement by a single party” and “the claim drafter is the least cost avoider of the problem of unenforceable patents due to joint infringement,” the court found that “[i]t would thus be unwise to overrule decades of precedent in an attempt to enforce poorly-drafted patents.” In this particular case, “there is nothing to indicate that [the accused infringer’s] customers are performing any of the claimed method steps as agents for [the accused infringer], or in any other way vicariously on behalf of [the accused infringer].”
SUBSEQUENT TREATMENT: AKAMAI TECHNOLOGIES, INC. v. LIMELIGHT NETWORKS, INC. (Fed. Cir. 2015) (P, en banc)