Joint Infringement: When Multiple Actors Work in Concert

McKesson Technologies Inc. v. Epic Systems Corp. (Fed. Cir. 2011)

The Court of Appeals for the Federal Circuit has again ruled that infringement of a patented method requires that a single entity performs all steps of the method. Other recent cases on point include BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 552 F.3d 1318 (Fed. Cir. 2008). According to these cases, actions by third parties only count toward infringement if those parties are acting as agents of or under the control and direction of the single direct infringer.

In McKesson, the patented communications method requires action from a health care provider as well as multiple users. There was no infringement here because the users were not acting under the “control and direction” of the health care provider.

Inducement <> Control: Although the users were encouraged by the health care provider to take the would-be infringing step, encouragement alone is doctrinally insufficient to consider the users as agents of the health care provider. In his opinion for the court, Judge Linn noted that the users were not under a contractual duty to use the system and that the “voluntary actions of patients” were did not create an agency relationship.

An interesting aspect of the decision is that each judge filed an opinion.

Judge Linn, writing the “opinion for the court” indicated that the court was bound by prior precedent, but also argued that patentee’s facing a joint infringement situation simply should have done a better job in claim drafting.

[I]n patent law, unlike in other areas of tort law, the patentee specifically defines the boundaries of his or her exclusive rights and provides notice to the public to permit avoidance of infringement. This stands in sharp contrast to the circumstances surrounding a joint tort where the victim has no ability to define the injurious conduct upfront and where, absent joint liability, the victim would stand uncompensated as a consequence.

This approach is supported by an interesting article by Mark Lemley, et al., that argues most divided infringement situations could be solved by better claim drafting.

Judge Bryson concurred in the judgment based upon binding precedent, but called for an en banc re-hearing.

I agree that the decision in this case is correct in light of this court’s decisions in BMC Resources, Muniauction, and Akamai Technologies. Whether those decisions are correct is another question, one that is close enough and important enough that it may warrant review by the en banc court in an appropriate case.

Judge Newman dissented – arguing that the approach conflicts with prior precedent:

Earlier cases applied the law of infringement as a straightforward matter of tortious responsibility. For example, in Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1985), the court held that contributory infringement was possible when a step of a method claim was practiced by the customer, and explained that “because [the manufacturer’s] customers, not [the manufacturer], applied the diazo coating, [the manufacturer] cannot be liable for direct infringement with respect to those plates but could be liable for contributory infringement.” Id. at 1568. This has been the law. It has never had en banc reversal.

Interestingly, the Fromson case has been repeatedly cited for the notion that customer actions cannot be used to support a direct infringement charge against a manufacturer. The case has only rarely been cited this additional teaching that inducing infringement does not require a single direct infringer. The first Federal Circuit decision holding that inducement requires proof of direct infringement appears to be Met-Coil Systems Corp. v. Korners Unlimited, Inc., 803 F.2d 684, 687 (Fed. Cir. 1986). In several post-1952 cases, the Supreme Court has stated that an invention must actually be infringed – i.e., practiced – before someone can be liable for indirect infringement. However, in those cases, the Supreme Court did not state that the actual infringement must be performed by a single entity, and a fair reading of those cases would allow for infringement-by-conspiracy.

120 thoughts on “Joint Infringement: When Multiple Actors Work in Concert

  1. Well thank you all. Mission accomplished. I sought enlightenment, and got it, explicitly from MM, implicitly from others: “you can always open prosecution back up, sacrificing absolutely nothing, and add some dependent claims”.

    Striking the right balance, between the inventors and those investing in innovation in manufacturing industry; not easy for these patent judges. Hence the 2:1 split.

  2. <>The majority here gots this one right.

    Actually, they pulled the result out of their axxes, as the dissent makes perfectly clear. Yet another case that should be heard en banc.

    a defect is indeed alleged. The defect being only that the claims be not quite right and that dependent more narrow claims need to be added (just in case the daddy independent claim be shot down).

    Just in case? LOL.

    A:”I’d like to return this merchandise. It’s defective.”

    B: “In what way?”

    A: “I’m not sure. I’m afraid it might break.”

    B: “What makes think it might break?”

    A: “If I knew, I wouldn’t tell you.”

    Just to be clear, this decision lets incompetent prosecutors who fail to file a continuation application a complete do-over. If you’ve got a ridiculously broad claim to start with, why bother to file a continuation? According to this case, you can always open prosecution back up, sacrificing absolutely nothing, and add some dependent claims.

  3. without alleging any defect in the existing claims

    Not quite right there Ned-O-gram, a defect is indeed alleged. The defect being only that the claims be not quite right and that dependent more narrow claims need to be added (just in case the daddy independent claim be shot down). And as you adroitly mention, narrowing reissues are allowed throughout the patent life.

    Course it does seem to offend the common sense notion of adding something and yet be a narrowing reissue, and that’s where the not-so-savvy Maxie be coming from. As I pointed out to him, the independent already done cover the dependent, so there not be any real adding. It be a prophylactic change, but one that if the independent done fall, would be a true narrowing change. The majority here gots this one right.

  4. lolz here how Sunshine avoids his favorite treatment of dissecting claims – otherwise weza have a giving something to a patient step and a human body does smoething step – the first bein old and the second bein a natural reaction/occurance (not patent eligible subject matter).

    NIMBY rules.

    Just an observation.

  5. Just to make it perfectly clear, a non broadening reissue is available during the entire life of the patent. Tanaka allows one to file for a reissue without alleging any defect in the existing claims, but merely to add dependent claims.

    I can understand why the likes of IBM and Kappos would oppose this. I haven’t read the Board opinion, but I wonder whether herr ex IBM VP IP was on the panel.

  6. Maxi,

    Ya be a bit daft. The “art of tailoring dependent claims” be more a way to preserve validity and less a way of going after particular infringers (wherein the delay-ta-issue idea would apply).

    Keep in mind the “dependent claims be more narrow than the independent claims” rule. In other words, what be covered by the dependent claims already be covered by the independent claim. The independent claim just may cover too much.

    Your “delay” argument is not a driver and such will have no impact on the “backlog” issue.

    Just an observation.

  7. MD Dennis, can we have a thread on Tanaka? I find most interesting its confirmation by the CAFC that an Applicant can add dependent claims up to 2 years after issue, in the context of “pendency” in the PTO.

    The two years post-issuance deadline is only for broadening reissue applications, Max.

    Adding dependent claims under Tanaka (without deleting any of the earlier issued claims?!) would be allowed any time during pendency of the patent, I believe.

  8. Sunshine – your change is unnecessary. Why limit to only certain types of business deals? – that flies in the face of the very definition of “induce” that I done listed above.

    6, to be clear, your handwaivy pronouncement of what be clear lacks any sound, measured or authoritative basis. I done showed above exactly why this particualr “brightline’ is one screaming for the Supremes to quash.

  9. Dennis, can we have a thread on Tanaka? I find most interesting its confirmation by the CAFC that an Applicant can add dependent claims up to 2 years after issue, in the context of “pendency” in the PTO.

    What I mean is, a CAFC blessing to the art of tailoring dependent claims to acts of infringement, just as long as the inventor comes forward with his belated claim within two years from issue, ought to encourage Applicants to delay issue for as long as possible.

    That ought to take some of the steam out of the “backlog” issue, no?

  10. “So? There’s a transformation. Specifically, a transformation involving administration of a drug to a human. End of analysis under Prometheus.”

    Yeah there are reasons why I lol at Prometheus.

  11. To be clear, the real mistake was the USSC being open to the idea of infringement by multiple parties way back in the day.

  12. “That said, the CAFC’s jurisprudence does have the benefit of forcing applicants to write better claims (or invent better inventions), and it does avoid certain troll-friendly slippery slopes wherein infringement is cobbled together from the innocent acts of a multiple entities.”

    Now that you mention it, Rader does seem to be on a personal crusade to undermine trolls. He has been limiting MPF, damages, DOE, product by process and now method claim liabiltiy. One after another. A pattern, it might seem.

    BTW, it appears AT&T and Lucent are both troll-feeders. They sold modem patents to Rembrandt who sued Canon and HP. See today’s cases.

  13. Sunshine,

    cobbled together from the innocent acts of a multiple entities.

    You have assumed the very premise under consideration – “innocent” aint when orchestrated by teh relationship of a business deal.

  14. Ned In this case, the patient infringes the method claim by using the system.

    So now you can infringe a method claim by practicing just a fraction of its many steps?

    I don’t think so, Ned. The patient isn’t “electronically comparing content” or “providing a fully automated mechanism for generating a personalized page”.

    The system owner who provides the system and the access to the patient is liable as an inducer. Just the way I see it.

    It’s not an entirely unreasonable position, Ned. And as I’ve attempted to illustrate upthread, there seems to be a tension with the standard applied to find inducement of non-joint (single actor) infringement (the contract/agency relationship between inducer and infringer seems to be diminished in the single actor situation).

    That said, the CAFC’s jurisprudence does have the benefit of forcing applicants to write better claims (or invent better inventions), and it does avoid certain troll-friendly slippery slopes wherein infringement is cobbled together from the innocent acts of a multiple entities.

  15. lulzed @ prometheus 2. Iirc that is one of the cases the supremes dodged right?

    For the moment.

    Be clear, you have one step of “causing” in the one claim. And in the other claim you have a step of “selling” and a step of “causing”.

    So? There’s a transformation. Specifically, a transformation involving administration of a drug to a human. End of analysis under Prometheus.

  16. Malcolm, put your thinking cap on for a moment.

    Make and have made. Long, long in the law. A party can be liable for “making” even if he buys a component from a third party, even if he subcontracts a whole or a portion of the assembly.

    We agree on this, I hope.

    We do not require the person liable to personally do everything. When he asks a third party to help, that third party does not have to be an agent, just someone responding to the request of the mastermind in some fashion.

    When the mastermine asks the subassembler to make for him, we do not require that the request itself be “active inducement” in the 271(b) sense.

    In this case, the patient infringes the method claim by using the system.

    The system owner who provides the system and the access to the patient is liable as an inducer.

    Just the way I see it.

  17. I lulzed @ prometheus 2. Iirc that is one of the cases the supremes dodged right? Not to worry, one day some super valuable drug therapy will make it on up there.

    Be clear, you have one step of “causing” in the one claim. And in the other claim you have a step of “selling” and a step of “causing”.

  18. All, consider as well that 150 years ago, we decided that the “make” right included the right to prevent “have made.” It made no difference whatsoever whether the party making controlled the party “have making” or whether the components, were “off the shelf.”

    I have drafted and seen drafted numerous licenses as well where the license authorizes the licensee both to practice and to have practiced methods. Now, why would we do that if the licensee didn’t need a license if he “had practiced” a single step of the processs?

    There is something radically wrong with Rader’s BMC decision.

  19. Not sure where you’re coming from, 6. Drug therapies sail right over 101. That’s a two second analyis under Prometheus.

  20. NL What is the theory of inducement that you are ascribing to for claim 1?

    Classic 271(b) inducement. I don’t believe there is anything theoretical about whether the competitor would be liable for induced infringement of claim 1.

    Is that theory necessarily dependent on how “single entity” is defined? Is “single entity” defined differently for claim 1 and claim 2?

    I believe “single entity” means “one entity” = one corporation (including its employees and contractors) = one person (and their employees or contractors). It does not include “one corporation and one person to whom a product is sold or offered.”

    The only caveat I can think of, and not quite evident in the fact pattern here, concerns whether there are other non-infringing uses of drug B that are available to the public that would not bear on patent infrigement.

    I don’t think this caveat is relevant where there are express instructions to act in a manner to infringe a claimed method. But I agree that if there were no such instructions, there can be no finding of induced infringement based on the sale of an off-patent composition, regardless of how many people medicate themselves in an infringing manner.

  21. Malcolm,

    Company is liable for inducement of claim 1 but there is minimal or no “control” of direct infringer, contract or otherwise.

    What is the theory of inducement that you are ascribing to for claim 1? Is that theory necessarily dependent on how “single entity” is defined? Is “single entity” defined differently for claim 1 and claim 2?

    It appears that your hypo is drawing a distinction between method claims that are fully practiced by one party (claim 1) and those that need more than one party to be fully practiced (claim 2). Is it always a fait acompli that entity must be synonymous with party, or can multiple parties comprise an entity?

    I think that the point being stress by Dennis Crouch above is that the Surpreme Court may give some latitude on this distiinciton, given equtiable concerns – that the exact same action by Company theoretically occurs for both claim 1 and claim 2, and that if it is a given that Company induces by that action in claim 1, either the claim itself changes the inducement in claim two or the theory of inducement changes.

    Should the theory change, based on equitable considerations? In the sense discussed on this thread, the culpability of Company’s actions is exactly the same in both claim 1 and claim 2. There is a relationship established whether or not there is minimal or no “control” by the company of the direct infringer.

    The only caveat I can think of, and not quite evident in the fact pattern here, concerns whether there are other non-infringing uses of drug B that are available to the public that would not bear on patent infrigement. Since claim one seems to indicate that such uses are indeed not available, then B’s actions, even in step two cannot be with clean hands and I cannot see how equity would allow an overly strict or brightline rule of inducement theory to excuse Company’s behavior.

  22. Malcolm, I don’t think that “selling” a drug is a proper method step.

    I would suggest a little more complexity.

    Try this:

    Claim 1,

    a) using machine X to draw blood sample;

    b) testing blood sample for metabolites of drug Z;

    c) administering drug z according to a table correlating drug z metabolite levels and dosage levels.

    All the steps could be performed by a patient with the proper equipment. But assuming steps a or b or a and b are performed by a third party lab, should the result be changed?

    Obviously not with respect to an inducer of all three acts, even if the inducer induces one party to induce other parties, who may induce still third parties.

    Gets complicated, but the law should not require more with respect to the inducer.

    The same considerations should not apply to innocent parties who are induced to perform an otherwise innocent act. They should not be liable under any theory.

  23. It’s an interesting hypothetical so I’m reposting here:

    Hypo:

    claim 1: A method of treating disease X, comprising causing drug B to be administered two times daily to a human body.

    claim 2: A method of treating disease X, comprising selling drug B, and causing drug B to be administered two times daily to a human body.

    Competitor company sells drug B, labelled for administration twice daily. Person administers drug (self-administration is covered by claims).

    Company is liable for inducement of claim 1 but there is minimal or no “control” of direct infringer, contract or otherwise.

    What about claim 2? Now we have joint infringement just like in the McKesson case, and the company is one of the actors practicing a necessary step for infringement. Is the standard for inducing different in this latter instance because there are two actors required for infringement?

  24. For example, it’s one thing to tell you to “Keep fluffing” on a bi-weekly or even bi-daily basis

    That just dont make sense.

    Med Check!

    in various contexts

    Um, no. Same one and only context ever – you bein a big baby and at the same time struttin abouts how grown up you be.

    Chuckles, my man.

  25. But pingaling talked about you every day. Think about that.

    What’s there to think about?

    Unlike you, my main man can actually think and can actually write. Sure he done have his Nazgul days where he dont make no sense, but by the by – he dont go around paradin like he knows stuff (unlike the rest of the horsemen).

  26. Rader, in BMC, said as much.

    I have, in response, attempted to draft background transactions/steps performed by other than the “mastermine” in background sections. I can only hope that do so will allow the claims to be enforced.

    Hope is not really what we need. We need some reliability.

  27. I don’t know MM, I think if we did a statistical analysis the volume of his posting was probably way down. If for no other reason than he had little excuse to keep on posting multiple times in a given offshoot thread.

    IMO we ought to just make it a permanent thing and see how long he lasts with little to no attention being paid to him. If I had to guess, it wouldn’t be more than a month. Trolls feed off the responses, the only way to kill one is either physically or to starve them of responses.

  28. Perhaps the proper way to look at the issue is that the method claim is being infringed, as all of the claimed steps are being performed. However, there is no single infringer who can be held liable for the direct infringement (absent some sort of agency relationship). But, much like the medical practitioner carve-out in 287(c), the fact that no single direct infringer can be held liable, does not in any way preclude a finding of inducement. Liability arises from the active inducement of infringement–it should not be predicated on the active inducement of infringement by a single entity.

  29. Or maybe the “Big D” simply grew tired of the numbing repetition of your comments, pingaling. For example, it’s one thing to tell you to “Keep fluffing” on a bi-weekly or even bi-daily basis.

    But I suspect if I did it twenty times a day and used ten different sockpuppets it would be a different story.

    Clearly you were deeply affected by the incident since you’ve brought it up about a dozen times now, in various contexts. Maybe by next year you’ll have gotten over it?

  30. I don’t think there should be any difference. While patentees should certainly write better claims, I also don’t think that the question of inducement of infringement should come down to whether or not someone performing one of the clamed steps is contractually obligated to perform that step (as opposed to merely being instructed or told to do something). While inducement of infringement of a method claim still must require that all of the claimed steps are being performed, there is no logical reason (in the context of inducement) for insisting that one entity (alone or through agents) perform all of those steps when there is a single entity responsible for inducing the performance of all of the steps.

  31. I thought this was supposed to turn into a “one week at a time” thing. Or is the train wreck more important to you?

    In case you didn’t notice, there was little or no change in pingaling’s commenting habits. Regardless of whether anyone calls him out on his toxic nonsense, he just finds someone else to troll.

    You appeared to be absent for weeks, IANAE. But pingaling talked about you every day. Think about that.

  32. Judge Newman maintains in her dissent that this case forecloses patent protection on all web based inventions of this type. I, however, do not necessary agree.

    First of all, there could be instances when the user and provider are the same entity. For example, the provider could be a company and the users its employees who use the system (say a database or intranet application) as part of their assigned duties. Of course, such situations probably do not capture the real commercial value of web based inventions.

    I think it possible to better capture the commercial value of web based inventions by describing them in the claims as the actions of a single person. The inventions at issue in this case and those that preceded it were internet services patented as methods of communicating information or performing transactions. Generally, it takes at least two people to do such activities. It seems natural, accordingly, to describe such methods in the claims of a patent as the concerted action of two people. They could also be described as the action of one person. Thus it may be unnatural but not impossible to describe in the claims such web based invention as methods performed by a single entity.

  33. Ned Malcolm, agreed. Since under the facts, the deep pockets entity is directly causing the infringement, it might be better to simply call them the direct infringer under 271(a).

    There is no single “direct infringer” in the McKesson case, so I don’t agree. There is an “accused inducer of infringement”, however. I don’t think you understand what I’m driving at, but I don’t think I can state it more plainly than I have.

    I think they will end up calling this 271(b) inducement.

    I think that is certainly what it is. Which brings me back to my question: why should the “control” required to find indirect infringement involving a single induced infringer be different than the control required to find indirect infringement involving two actors whose actions, taken together, infringe? Particularly where one of those actors is the accused inducer of the others?

    Hypo:

    claim 1: A method of treating disease X, comprising causing drug B to be administered two times daily to a human body.

    claim 2: A method of treating disease X, comprising selling drug B, and causing drug B to be administered two times daily to a human body.

    Competitor company sells drug B, labelled for administration twice daily. Person administers drug (self-administration is covered by claims).

    Company is liable for inducement of claim 1 but there is minimal or no “control” of direct infringer, contract or otherwise.

    What about claim 2? Now we have joint infringement just like in the McKesson case, and the company is one of the actors practicing the infringing step. Is the standard for inducing different now because there are two actors required for infringement?

  34. Cause it be someone else that all-waaaaaaaaaaaaaah’s to the Big D.

    Someone else that just happened to also sign their posts with “Malcolm Mooney.”

    Course, the better explanation be it just be Med Check time.

  35. The “train wreck” and all that?

    Um, no.

    You must have me confused with somebody else.

    This here be the Chuckle Wag_on.

  36. By the way, pingaling, I went a week without responding to a single one of your worthless comments and/or insults.

    Congratulations. How many drinks does one get for a “one week sober” chip these days?

    I thought this was supposed to turn into a “one week at a time” thing. Or is the train wreck more important to you?

  37. The “train wreck” and all that?

    Um, no.

    You must have me confused with somebody else.

    This be the Chuckle Wagon.

  38. Actually ya failed ta go the week. Check it out.

    Like I done told you at teh time – You cant help yourself.

  39. The “train wreck” and all that?

    Um, no – Perhaps you have me confused with someone else.

    This be the Chuckle Wagon.

  40. Malcolm, agreed. Since under the facts, the deep pockets entity is directly causing the infringement, it might be better to simply call them the direct infringer under 271(a). Screw this agency theory.

    But, in the end, I think they will end up calling this 271(b) inducement. (But that brings potential baggage of “knowledge” of the patent, etc. Ugh.)

  41. By the way, pingaling, I went a week without responding to a single one of your worthless comments and/or insults. I wonder if you are capable of doing the same. Or is the “train wreck” more important to you?

  42. You be the one that went all-waaaaaaaaaaaaaah’s to the Big D ta put a block on the word.

    Now pingaling is telling fairy tales. Someone go make some popcorn.

  43. you be whinin that I say you be hysterical

    I didn’t whine, pingaling. I told you to go fxxx yourself.

  44. But the control issue surrounds the direct infringement inquiry when two or more participants are jointly infringing a method. I think it is irrelevant when the issue is whether a first party is liable under 271(b) for a second party’s or parties’ infringement.

    My question, Ned, is: why is the “control” issue irrelevant only in the second case? In both cases, an entity with deep pockets who is not directly infringing is being sued by the patentee.

  45. my content way way outclass anything you bring.

    Maybe in your own mind, pingaling. Most of what you “bring” is personal insults to other commenters.

    Makes ya so mad ya can just swear, dont it?

    No, it doesn’t. And when I told you to go fxxx yourself I wasn’t angry. I just felt like that it was the appropriate response to your comment. True of most of your comments, actually. I urge others to engage with you in the same way. Correct me if I’m wrong, pingaling, but you would appreciate that, wouldn’t you? The “train wreck” and all that?

  46. That be evenmore hysterical then – you be whinin that I say you be hysterical.

    waaaaaaaaaaaaaaaaaaaaaaaaaaaaah !

    Ya want me to try to find your mommy for you?

  47. I aint that one that couldnt get over it there Sunshine. You be the one that went all-waaaaaaaaaaaaaah’s to the Big D ta put a block on the word. Never seen anyone cry like that before or since.

    If ya cant see the irony, you be tryin not to.

  48. profanity outa teh blue aint what normal people use

    It was hardly out of the blue, pingaling. I was responding to your 1:49 pm comment. I apologize if that wasn’t clear.

  49. Lolz – Sunshine – ya be confusing style and content again.

    My style may be affected – but my content way way outclass anything you bring.

    Makes ya so mad ya can just swear, dont it?

  50. Malcolm, welcome to my world of bad typing. I am also rushed half the time so I cannot even review and edit out the typo’s.

    But you raise a very good point here. I have answered it above, twice. But the control issue surrounds the direct infringement inquiry when two or more participants are jointly infringing a method. I think it is irrelevant when the issue is whether a first party is liable under 271(b) for a second party’s or parties’ infringement. The latter question involves only whether the mastermind caused the infringement by instruction, supplying the means and instructions, or some combination.

    I agree with Newman that none of this requires that only one party perform all the steps of a method. The mastermind could give independent orders to the members of a group, none of whom know each other, so long as their combined acts result in an infringement, such as in Univis Lens.

  51. Sure smells like a meltdown – profanity outa teh blue aint what normal people use.

    Hint: Normal ta Sunshine aint normal ta normal people.

  52. pingagling Sounds real grown-up, dont it?

    Nothing you type here sound “real grown-up” pingaling.

  53. s that what you call a “meltdown”?

    No, it’s not what I call a “meltdown”, pingaling.

  54. so says teh man who waaaaaaaaaaaaaah’s to the Big D about an ape moniker, teh man who “practices” in the grown-up arts.

    Sounds real grown-up, dont it?

    Just an observation – way way more practice needed.

  55. I agree with you on 271(c). Since no material or apparatus is being sold, there can be no 271(c) liability.

    Regarding 271(b), I have always believed the AIPLA brief’s position is the correct position. Inducement does not, in my view, require knowledge of the patent and a specific intent to cause infringement. All it requires is that one party cause — induce — an infringement. Actively, implies some intention to cause the acts, but certainly offering an otherwise infringing system to the patient, inducing them to access the system by providing a login and instructions, is all that is required, in my view, for liability under 271(b).

  56. My typing is terrible today. Let me restate:

    Why should the “control” required to find indirect infringement involving a single induced infringer be different than the control required to find indirect infringement involving two (or more) induced actors whose actions, taken together, infringe?

  57. Go fxxx yourself, pingaling

    You stay classy, San Diego.

    (must be one O dem posse things, or is that what you call a “meltdown“?)

  58. metoo, everything you say is true. But the important issue in nearly all of these inducing cases is not the “joint” nature of the infringement. It’s what exactly constitutes inducement.

    My question is: what difference should it make whether one person is “controlled” or two? Or, to put it another way, why should the “control” to find indirect infringement involving a single induced infringer be different than the control required to find indirect infringement involving two (or more) induced infringers? I think there may be reasonable answers to those questions.

  59. single entity, no.

    It is given that there is no 271(a) infringement.

    It is a given that there is no 271(c) infringement as no material or apparatus is being sold.

    Newman’s position is that this the systems provider is liable under 271(b) under these facts.

    Now that theory requires the AIPLA brief kind of inducement — the strict liability kind, the kind where if a party causes a second party to perform the acts that result in infringement, there is inducement.

    I really think the Supremes should know about this case before they decide the rice cooker case.

  60. Yes, but the manufacturer is not the direct infringer. More importantly, there is usually a single step in the method claims you are referring to. Not sure how the concept of joint infringement could ever come into play in such situations. Who are the potential joint infringers? The prescribing doctor and the patient?

  61. metoo How is that even relevant to this case (or any others)?

    How is that relevant? Because people who buy labeled drugs for personal use aren’t contractually obligated to take them according to the instructions on the label. Yet, unless I’m mistaken, it is still considered inducement of a claimed metho to sell a drug (even an unpatentable drug) with instructions to sell the drug according to the patented method.

  62. Ned, now I realize I’ve gotten myself completely turned here. My 12:31 and 12:38 comments are back axxwards. I don’t know if I’d call it a “principle” or not, but contributory infringement does require direct infringement. More importantly, however, this case has nothing to do with contributory infringement under 271(c), so I’m not sure why Newman or anyone else is bringing it up except to create confusion. Obviously the patentees brought it up as a last ditch effort and the CAFC majority here shot it down, and correctly so.

    271(c) Whoever imports into the United States a component of a patented machine, manufacture, combination or composition, or a material or apparatus for use in practicing a patented process, constituting a material part of the invention, knowing the same to be especially made or especially adapted for in an infringement of such patent, and not a staple article or commodity of commerce suitable for substantial noninfringng use, shall be liable as a contributory infringer.”

    This case is all about inducement under 271(b). I don’t believe there is any question that one can be liable for inducing patent infringement if there are multiple parties working together to commmit each step of a claimed method, as long as they are working under the control or agency of the party being sued.

    The only real issue here is: what is the extent of “control” required to find “inducement”? The answer is: quite a bit, more than mere encouragement or “making available” a step to be performed.

    Better claims — and better inventions — will avoid this non-problem in most instances.

  63. The only hysterical reaction here

    Um, no. You and posse member 6 and the random slap happy “slippery slope” be pretty much hysterical.

  64. How is that even relevant to this case (or any others)? Have you seen any patents having method claims which include the step of labeling a prescription drug with dosage indications?

  65. “Does anyone believe that this case, or the general trend of cases, is leading to a situation where the labeling of a prescription drug with dosage indications will no longer be considered an act of inducement by the drug maker of a claimed method of treatment?”

    One can only hope for good things MM. Courts rarely deliver them.

  66. “McKesson has identified no viable legal theory under which the actions of MyChart users may be attributed to Epic’s customers. Without an agency relationship or contractual obligation, the MyChart users’ actions cannot be attributed to the MyChart providers, Epic’s customers. Thus, McKesson has failed to demonstrate that any single party directly infringes the ’898 patent. Absent direct infringement, Epic cannot be liable for indirect infringe-ment. BMC Res., 498 F.3d at 1379 (stating “[i]ndirect infringement requires, as a predicate, a finding that some party amongst the accused actors has committed the entire act of direct infringement.”).

    Malcolm, that is what this case is all about.

  67. Sorry, forgot to edit that last sentence. Should be:

    Nobody is saying that “the principles of contributory infringement require that all the acts of a method claim be performed by a single entity.”

  68. Does anyone believe that this case, or the general trend of cases, is leading to a situation where the labeling of a prescription drug with dosage indications will no longer be considered an act of inducement by the drug maker of a claimed method of treatment?

  69. Ned st of us would agree that Judge Newman is correct here that principles of contributory infringement do not require that all the acts of a method claim be performed by a single entity.

    It’s also a straw man. As I pointed out upthread, Dennis’ first statement in his summary, above, is a misleading description of the case. Nobody is saying that “the principles of contributory infringement do not require that all the acts of a method claim be performed by a single entity.”

  70. pingaling Wow – withthe waive of a hand the presumpiton of validity is completely dispelled.

    Keep fluffing, pingaling!!!

  71. pingaling To counter the Sunshine-sky-is-falling-but-then-every-combination-means-infringement-over-the-top-hysterical reaction

    The only hysterical reaction here is Newman’s (“there will be no way to protect these important inventions!”). She’s made such claims before, as you may recall. For instance, she was extremely concerned that certain inventors would stop inventing things that they couldn’t describe if we didn’t allow them to claim things that they couldn’t describe. That didn’t work out to well for Judge Newman.

    Somehow, I suspect this won’t either.

  72. “I think that Ping has made a very good point here”

    I lulzed. Tell us another one DC.

    “However, the court these divided infringement cases has bound itself to the old school agency doctrine.”

    For good reason. Slippery slope.

  73. I yield to the master. But can we agree that the “inducement” you’re talking about here is wholly distinct from the “inducement” in “inducement of infringement”?

  74. I think that Ping has made a very good point here. There is certainly a continuum of interactions between a mastermind and the actual actor. One way to spell it out would be control vs inducement vs contribution vs acting entirely independently.

    In a divided infringement scenario, the current law says that the mastermind must have some strict level of control over all of the parties practicing each element of the invention. It would make sense to have a more relaxed rule that only required the mastermind to induce the other parties rather than control their actions. In addition we have a common sense problem with the definition of “control” and our modern notion of efficient breach of contract. I.e., just because I’m your employee or have a contract to perform some action does not mean that you practially control my actions. We often find that non-binding inducement is much more effective than legal contracting. However, the court these divided infringement cases has bound itself to the old school agency doctrine.

  75. and try ta read my comment on what constitutes “single entity” – that be the common sense here, else “neener-neener one-step-short, but still in a relationship would threaten every method patent (the slippery slope in the opposite direction).

  76. I say again, the definition of “induce” has nothing to do with the single entity relationship.

    No matter how many times ya say it, ya still be wrong.

    But that shouldnt stop ya from keepin on sayin it.

  77. Yes, some claims are just invalid

    Wow – withthe waive of a hand the presumpiton of validity is completely dispelled.

    And we havent even gotten ta Monday yet.

    A word O advice – ya can stop studying who is who onthe Supreme Court and spend a little time on the law.

  78. Cause contracts be passed through an administrative agency before they get to be called contracts (and inure certain explicit rights)…

    O wait. They dont.

  79. The proper response is “thank you.”

    For what, demonstrating even more clearly that you are confused? Thank you, then!

    I say again, the definition of “induce” has nothing to do with the single entity relationship. Try reading the case. The Supreme Court likely will, before it ventures into “common sense” land.

  80. Yes, some claims are just invalid, and some patents unenforceable. Just like some contracts are badly drafted and unenforceable. The law should not be contorted to fix a non-problem.

  81. The “single entity” relationship be the point O my ppost – and that relationship just dont havta be as all-emocpensing as some panels would have ya believe. The mere business relationship of seller-buyer be enough as indicated inthe defintion of “induce” that I so gratiously supplied.

    The proper response is “thank you.”

  82. I aint confused se,

    I just be pointing out a possible Supreme Court “common sense” view O the situation.

    I never did say the Supreme Court be right in their trips through the “common sense” land.

  83. Exactly. It’s a slippery slope

    Chuckles – surprise surprise ta see who jumps in on the extremely poor logic of Sunshine.

    giddie up posse.

  84. Just an observation.

    Actually, it’s just an observation that reveals that you are confused. The “control/agency” issues in this line of cases have nothing to do with the definition of “induce.” These cases say that we don’t even get to the issue of inducement if there’s no “single entity” practicing the method. The control/agency issues here are about whether joint action can be attributed to a single entity.

  85. “If you allow the joining of acts by multiple entities (absent a controlling mastermind or conspiracy) to constitute “actually infringing”, then just about any method out there is “actually infringed.” Can’t be right.”

    Exactly. It’s a slippery slope.

  86. Now let’s take a modern day hypothetical trip through the “common sense” filter as may be applied by oh say the Supreme Court.

    If we look up the word “induce”, say for example at • wordnetweb.princeton.edu/perl/webwn

    The most pertinent definition (with examples) is

    • cause to do; cause to act in a specified manner; “The ads induced me to buy a VCR”; “My children finally got me to buy a computer”; “My wife made me buy a new sofa”

    Now if we look at this notion of control/agency, it is immediately apparent that there is way too much emphasis on the first party having near complete dominion over the second party such that the second party seemingly is not acting on its own volition. In each of the examples given in the definition the second party maintains its own volition. I still chose to buy a VCR, I still chose to buy a computer. I still decided to buy a new sofa. Sure there is a first party attempting to influence, but by no means does that first party control in the sense that I am merely an agent for that first party.

    To counter the Sunshine-sky-is-falling-but-then-every-combination-means-infringement-over-the-top-hysterical reaction, it should be noted that there is still some form of relationship between the parties in each of the examples above. There be no willy-nilly completely random slap together parties doing each of the various steps. I think the most critical example be the ads inducing VCR action. Cause that be a business relationship which be most likely to capture the artificial well-I-didn’t-doall-the-steps-neener-neener-you-cant-touch-me end around of a method patent.

    Just an observation.

  87. Most of us would agree that Judge Newman is correct here that principles of contributory infringement do not require that all the acts of a method claim be performed by a single entity. This would lead one to believe that the panel decision in BMC Resources must be incorrect, and must further have not followed prior panel decisions.

    Now, who have I been saying on the Federal Circuit is the judge most prone to get it wrong, the judge who is most prone to arrogantly ignore prior panel decisions?

    We all know the answer to that question. And lo and behold, guess who authored the opinion in BMC resources? That’s right. You know who it was.

  88. Malcolm, consider two cases: the 1983 Fromson case, link to vlex.com, and the 1942 Supreme Court case in the Univis Lens, link to supreme.justia.com.

    Both cases involved method claims where multiple parties performed different steps of the patent process. In both cases, a first party perform a number of steps on article of manufacture, and then provided that article of manufacture to a second party who did the final step or steps. In the Supreme Court case, infringement was assumed. In the Federal Circuit case, the Federal Circuit said that the infringement could be “contributory.”

    I don’t know whether it is proper to characterize the above situation as having a “mastermind.” But it does seem that there is something very wrong in the premise that one must have one party (or its agents) performing all the steps of a method before there can be liability under contributory infringement theories including inducement.

    I would politely suggest that Newman is entirely correct here – the recent line of authority is in conflict with fire Federal Circuit authority and apparently in conflict with prior Supreme Court authority.

  89. In several post-1952 cases, the Supreme Court has stated that an invention must actually be infringed – i.e., practiced – before someone can be liable for indirect infringement. However, in those cases, the Supreme Court did not state that the actual infringement must be performed by a single entity

    It would seem to be implicit. Patent covers method A+B+C (all of the individual steps are old in the art). Individual X does A, individual Y does B, individual Z does C. None of these people by themselves infringe the claimed method.

    If you allow the joining of acts by multiple entities (absent a controlling mastermind or conspiracy) to constitute “actually infringing”, then just about any method out there is “actually infringed.” Can’t be right.

    But correct me if I’m wrong here: the present opinion does not in fact rule (as stated in the first sentence of DC’s summary) that “actual infringement must be performed by a single entity” in order to be liable for indirect infringement, does it?

    The issue here is that there was no indirect infringement because (1) the actions of at least two parties were necessary to infringe the claim and (2) it was found that there was no agency relationship or control/direction between the accused indirect infringer and one of the parties. It seems that is still entirely possible for actual infringement to be performed by multiple entities, as long as there is a mastermind. Later passages in the summary appear to make this clear, but the first sentence seems a bit off the mark.

  90. most divided infringement situations could be solved by better claim drafting.

    Or better inventions.

  91. McKesson’s ’898 patent is directed to an electronic method of communication between healthcare providers and patients involving personalized web pages for doctors and their patients.

    NOBODY COULD HAVE PREDICTED THAT SOMEBODY’S PERSONAL INFORMATION COULD BE STORED ON A WEB PAGE!!!! AND THEN ACCESSED BY CERTAIN PEOPLE??? MY GOD EDISON WAS A MOLLUSK COMPARED TO THESE INVENTORS!!!!

  92. 1. A method of automatically and electronically communicating between at least one health-care provider and a plurality of users serviced by the health-care provider, said method comprising the steps of:

    initiating a communication by one of the plurality of users to the provider for information, wherein the provider has established a preexisting medical record for each user;

    enabling communication by transporting the communication . . . ;

    electronically comparing content of the communication . . . ;

    returning the response to the communication automatically . . . ;

    said provider/patient interface providing a fully automated mechanism for generating a personalized page or area within the provider’s Web site for each user serviced by the provider; and

    said patient-provider interface service center for dynamically assembling and delivering customer content to said user.

    When was this P.O.S. filed? 1973?

  93. Yet another unfortunate case where Judge Newman gets it right but in dissent. Given Bryson’s concurrence, will we see the CAFC take this up en banc?

    Given the concurrence, I imagine that McKesson will ask.

  94. Yeah, and I remember your report: Something like the Supremes were pissed that the infringer did not disclose to its US clearance study patent firm that it had copied the rice cooker from the patent holder.

  95. 6, the issue is before the Supreme Court. I acknowledge the issue is up in the air by citing the AIPLA position on inducement which requires only active inducement of the acts that amount to infringement, not the prior knowledge of the patent and a specific intent to cause infringement.

  96. Yet another unfortunate case where Judge Newman gets it right but in dissent. Given Bryson’s concurrence, will we see the CAFC take this up en banc?

    Re: Lemley, clever claim drafting can’t always solve the difficulty posed by the court’s current jurisprudence on joint infringement. Often, but not always.

    Silver lining: it’s easy to give non-infringement opinions for claims like these.

  97. “By analogy, if the system provider perform all the steps of the method save for logging on and using the system, and the provider provides the means for logging on and using the system to the patient, the provider, in her view, should be liable for inducement of infringement because that provider actively induced the performance of all elements of the claim.”

    Ned, to understand why, even if this is her position, that this position is wrong please recite for us what the definition of
    inducement is and how it is found in a court of lawls.

    “(Inducement here has to be of the AIPLA brief kind of inducement where knowledge of the patent or intent to infringe a patent is not necessary for inducement infringement.)”

    So in other words, non-inducement inducement? I see.

  98. 6, perhaps on these facts, you might be right. But compare the recent case involving system claims were the user, logging on and running the system, was deemed to be a direct infringer, and the provider of the system liable for inducement.

    By analogy, if the system provider perform all the steps of the method save for logging on and using the system, and the provider provides the means for logging on and using the system to the patient, the provider, in her view, should be liable for inducement of infringement because that provider actively induced the performance of all elements of the claim.

    (Inducement here has to be of the AIPLA brief kind of inducement where knowledge of the patent or intent to infringe a patent is not necessary for inducement infringement.)

  99. On a different thread, Ned Heller said in reply to single entity:

    Single, thanks for the link (link to coatsandbennett.com ).

    I think Newmans is arguing that if two (more?) parties perform the steps of a method, that a party can still be liable if it “induces” the performs of the steps by the parties.

    Seems quite reasonable.

    What say you?

    I don’t have a strong opinion either way, but it would be nice to have it settled once and for all. It occurs to me that analyzing the “intent” prong of inducement could get difficult when there are multiple parties required to perform all the steps. Do you need specific acts to demonstrate intent with respect to each of those parties, or ?

    I do think Newman gets a little overboard when she says that this decision denies patent enforcement entirely for this type of claim. Just because the facts in the present case don’t satisfy the single-entity rule doesn’t mean that there are NO facts under which the claim is infringed.

  100. “infringement-by-conspiracy. ”

    Nobody infringes by conspiracy, they conspire so as to NOT INFRINGE. DUH.

  101. Muahmuhawhaw.

    “I see nothing at all conceptually wrong with this.”

    First, you have her argument wrong. On these facts anyway. She seems to think that someone acting of their own free will has somehow been induced by another to do something. In other words, her definition of inducement is incorrect.

    Second, we need a single infringer rule to rule them all!

  102. It has long been assumed that for both 271(b) and 271(c) liability, that one must have direct infringement.

    In contrast, relying on Fromson, Newman seems to argue that at least with respect to inducement, that one can be liable for inducement if one induces the joint action that together performs all the steps of the method.

    I see nothing at all conceptually wrong with this.

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