Joint Infringement of a Method Claim Requires "Direct Control" of Each Step

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.