Under current case law, the doctrine of joint infringement may be established through direct infringement under 35 U.S.C. 271(a), or may be established though inducement under 35 U.S.C. 271(b). Akamai Tech. v. Limelight Networks, 692 F.3d 1301 (Fed. Cir. 2012); Mckesson Tech. v. Epic Systems (Fed. Cir. 2012).
Recently, the Court of Appeals for the Federal Circuit (CAFC) clarified the requirements to establish joint infringement through inducement under 35 U.S.C. 271(b). Move v. Real Estates Alliance, LTD, op. 9-10 (Fed. Cir. 2013). In particular, the CAFC clarified that joint infringement may be established through inducement by demonstrating that an accused infringer had knowledge of an patent, performed some limitations of a claim from the patent, and induced others to perform the remaining limitations of the claim.
In Move, Real Estate Alliance (REAL), LTD asserted a patent directed towards a map-based system for locating available real estate against Move, Inc. Id. at 3-5. Claim 1 of the asserted patent required the creation of a database of available real estate properties, and the selection of a geographic area used to display the available real estate.
Although Move had created a database of available real estate properties, Move did not select the geographic area used to display the available real estate. Rather, Move’s users selected the geographic area. Thus, Move argued that it could not be held liable for direct infringement as it did not perform all the limitations of the claim. Additionally, Move argued that it could not be held liable for joint infringement though direct infringement under 35 U.S.C. 271(a) because it did not direct or control the actions of its users. Accordingly, Move requested that the district court grant a summary judgment of non-infringement. Id.
In granting Move’s request for summary judgment of non-infringement, the district court concluded that Move’s system did not perform the selecting limitation. Id. at 5. Specifically, the district court found that users selected the geographic area that was used to display available real estate, and that Move did not direct or control those users. Therefore, according to the district court, Move could not be held liable for direct infringement or joint infringement under 35 U.S.C. 271(a). Consequently, the district court granted summary judgment of non-infringement, which REAL appealed.
On appeal, the CAFC agreed that Move did not directly infringe; “If the performance of those steps is not attributable to Move, then Move cannot be directly liable for infringing REAL’s asserted method claim.” Id. at 8. The CAFC also agreed that Move could not be held liable for joint infringement through direct infringement under 271(a) because, “…there is no genuine issue of material fact that Move does not control or direct the performance of each step of the claimed method.”
However, the CAFC concluded that the district court legally erred by not analyzing the doctrine of joint infringement through inducement under 35 U.S.C. 271(b) as set forth in Akamai:
“We conclude that the district court legally erred by not analyzing inducement under 35 U.S.C. § 271(b). Recently, sitting en banc in Akamai, we clarified the law on inducement. We explained that all the steps of a claimed method must be performed in order to find induced infringement, but that it is not necessary to prove that all the steps were committed by a single entity. In so holding, we overruled the holding in BMC that in order for a party to be liable for induced infringement, some other entity must be liable for direct infringement.”
Id. at 9-10.
Accordingly, the CAFC vacated the district court’s grant of summary judgment and remanded for a determination as to whether Move is liable for joint infringement though inducement under 271(b). Id. at 10. Thus, the district court must now determine whether Move had knowledge of REAL’s patent and induced users to perform the claim steps that Move did not itself perform.
A copy of the CAFC opinion may be found here.