When drafting patent applications, patent attorneys sometimes forget that the claims they are drafting may later need to be used to in a patent infringement lawsuit. The patent attorney may not consider what will need to be proved for patent infringement, and may instead focus on drafting claims that will be allowed by the patent office.

One consideration that can be overlooked is whether more than one actor is needed to infringe a patent claim.

The US Supreme Court, in Limelight v. Akamai (June 2014), addressed the issue of multiple parties needed for patent infringement, but in the context of a party inducing others to infringe. The Supreme Court described the question before them as "whether a defendant may be liable for inducing infringement of a patent . . . when no one has directly infringed the patent." The answer was "no".

Initially, the Supreme Court described the prior Federal Circuit decision in Muniauction v. Thomsom. There, the Federal Circuit said that '"direct infringement requires a single party to perform every step of a claimed method. . . . This requirement is satisfied even though the steps are actually undertaken by multiple parties . . . if a single defendant "exercises 'control or direction' over the entire process.'" In Muniauction, there was an absence of control over the defendant's customers performing certain steps.

The Supreme Court continued by explaining the position of the Federal Circuit in Limelight. Leaving aside the question of direct infringement, the Federal Circuit said that inducing infringement exists "when a defendant carries out some steps constituting a method patent and encourages others to carry out the remaining steps - even if no one would be liable as a direct infringer . . . because those who performed the remaining steps did not act as agents of, or under the direction or control of, the defendant."

Assuming the correctness of Muniauction, the Supreme Court explained that in this case "performance of all the claimed steps cannot be attributed to a single person, so direct infringement never occurred." Therefore, no one can be liable for inducing infringement.

As acknowledged by the Supreme Court, its holding meant that infringement liability could be evaded by having multiple parties perform the method patent steps, and where the defendant does not direct or control the other parties. However, the Supreme Court specifically left open the possibility that the rule in Muniauction could be revisited.

PRACTICE POINTER: For the patent prosecution attorney, it can be difficult to predict whether one party will have control over other parties who are performing some of the method steps. In that case, omitting method steps that require performance by other parties could be a good choice.

For the patent infringement attorney, one might continue to "take advantage" of the "loophole" admittedly left by the US Supreme Court.

© Michael A. Shimokaji, 2014 The contents of this article represent the opinions of the author and not those of the author's law firm or clients

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