Joint Infringement of a Method Claim Requires "Direct Control" of Each Step
Client Alert | 1 min read | 07.16.08
In MuniAuction, Inc. v. Thomson Corp. ( No. 2007-1485; July 14, 2008), a Federal Circuit panel vacates an award of $77 million based on a finding that the asserted claims were either obvious or not infringed.
On the question of obviousness, the only difference between the asserted independent claims and the prior art was the use of a web browser interface. Following KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007), the Federal Circuit panel easily concludes that modifying the prior art to include a web browser was a predictable solution well within the capabilities of a person of ordinary skill in the art. The district court's finding of non-obviousness is therefore reversed as to the independent claims.
The Federal Circuit concludes that remaining dependent claims are not infringed, thus reversing the district court on this issue as well. Each of the dependent claims required at least two parties to perform all the steps. Joint infringement of a method claim requires one party to exercise "control or direction" over the entire claimed process, such that every step is attributable to the controlling party or "mastermind." In the case at hand, the evidence showed that the defendant, Thomson, did not direct another party to perform any steps on its behalf, and thus joint infringement was not proven. Joint infringement requires more than an awareness of another party's actions.
Contacts
Insights
Client Alert | 6 min read | 11.26.25
From ‘Second’ to ‘First:’ Federal Circuit Tackles Obvious Claim Errors
Patent claims must be clear and definite, as they set the boundaries of the patentee’s rights. Occasionally, however, claim language contains errors, such as typographical mistakes or incorrect numbering. Courts possess very limited authority to correct such errors. The United States Court of Appeals for the Federal Circuit has emphasized that judicial correction is appropriate only in rare circumstances, where (1) the error is evident from the face of the patent, and (2) the proposed correction is the sole reasonable interpretation in view of the claim language, specification, and prosecution history. See Group One, Ltd. v. Hallmark Cards, Inc., 407 F.3d 1297, 1303 (Fed. Cir. 2005) and Novo Indus., L.P. v. Micro Molds Corp., 350 F.3d 1348, 1357 (Fed. Cir. 2003).
Client Alert | 5 min read | 11.26.25
Client Alert | 6 min read | 11.25.25
Brussels Court Clarifies the EU’s SPC Manufacturing Waiver Regulation Rules
Client Alert | 3 min read | 11.24.25
