En Banc Federal Circuit Speaks On Joint Infringement and Induced Infringement

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En Banc Federal Circuit Speaks On Joint Infringement and Induced Infringement


In two major decisions issued by the entire court, the Federal Circuit addressed two open questions, one regarding the doctrine of joint infringement; the other, the scope of the International Trade Commission’s authority over acts of induced infringement.

In the latest of many chapters in the case of Akamai Technologies v. Limelight, the Federal Circuit reached a clear holding regarding the scope of direct infringement of method claims when more than one person performs the steps of such claims. In a rare showing of unity, the court issued a per curiam—that is, no single–author—unanimous opinion that a party who does not perform all of the steps of a method claim is nonetheless liable for infringement of that claim if it (1) directs or controls the performance of the remaining steps by another; or (2) acts in a joint enterprise with others to perform all of the steps of the claim. Point (1) was relatively settled law. Point (2) is a new development. On that point, the court held that a joint enterprise exists if four elements can be proven: an express or implied agreement among the actors; a common purpose to be carried out by the group; a community of pecuniary interest in that purpose; and an equal right to a voice in the direction of the enterprise. In sum, “to determine direct infringement, we consider whether all method steps can be attributed to a single entity” under either of these theories.

In their other major ruling, the Federal Circuit was more deeply divided. In Suprema v. ITC, the court held, by a 6–4 margin, that the International Trade Commission has jurisdiction over investigations into whether an imported article was later used within the United States to infringe a method patent claim. Under the governing statute, the ITC has jurisdiction over imported “articles that infringe” a U.S. patent. In an earlier decision, the majority of a three–judge panel had held that this language required the articles to be infringing at the time of their importation, as the statutory language suggests. In its en banc opinion, the Federal Circuit reversed field, finding that the statutory language was ambiguous, and deferring to the ITC’s interpretation of the statute to include cases in which an importer of a device—here, fingerprint scanners—induced end-users in the U.S. to use that imported device to infringe method patent claims. The majority asserted that this reading prevented foreign companies from gaming the system by importing non-infringing devices with instructions on how to infringe them after importation. The dissenters, led by Judge O’Malley, wrote that the statutory language “articles that infringe” was not ambiguous, and the plain language of the statute required that the articles that were imported be infringing at the time of importation.

Given the stakes, it seems likely that petitions to the Supreme Court will be filed in both cases—the Limelight case has already been there. It will be worth watching whether the Supreme Court seizes either of these issues for review.

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