There has been a significant amount of discussion among the members of the patent bar concerning the proper standard to apply under a theory of joint liability for patent infringement. The Federal Circuit has weighed in several times, adopting a “direction and control” standard in the BMC and Muniauction cases. More recently, the Federal Circuit went further to require an agency relationship for there to be joint infringement. In Akamai, the Federal Circuit stated, “Implicit in this court’s holdings in BMC Resources and Muniauction is that the performance of a method step may be attributed to an accused infringer when the relationship between the accused infringer and another party performing a method step is that of principal and agent, applying generally accepted principles of the law of agency as explicated by the Supreme Court and the Restatement of Agency” (emphasis added). The court concluded: “This court therefore holds as a matter of Federal Circuit law that there can only be joint infringement when there is an agency relationship between the parties who perform the method steps or when one party is contractually obligated to the other to perform the steps.”
In a decision issued on April 20, the Federal Circuit has vacated its prior opinion in Akamai and invited the parties and amici curiae to file briefs on the following issue: “If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?”
This is a significant issue for all parties who either have a method patent or stand accused of infringing a method patent.