1. Home
  2. |Insights
  3. |Joint Infringement of a Method Claim Requires "Direct Control" of Each Step

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 | 5 min read | 12.12.25

Eleventh Circuit Hears Argument on False Claims Act Qui Tam Constitutionality

On the morning of December 12, 2025, the Eleventh Circuit heard argument in United States ex rel. Zafirov v. Florida Medical Associates, LLC, et al., No. 24-13581 (11th Cir. 2025). This case concerns the constitutionality of the False Claims Act (FCA) qui tam provisions and a groundbreaking September 2024 opinion in which the United States District Court for the Middle District of Florida held that the FCA’s qui tam provisions were unconstitutional under Article II. See United States ex rel. Zafirov v. Fla. Med. Assocs., LLC, 751 F. Supp. 3d 1293 (M.D. Fla. 2024). That decision, penned by District Judge Kathryn Kimball Mizelle, was the first success story for a legal theory that has been gaining steam ever since Justices Thomas, Barrett, and Kavanaugh indicated they would be willing to consider arguments about the constitutionality of the qui tam provisions in U.S. ex rel. Polansky v. Exec. Health Res., 599 U.S. 419 (2023). In her opinion, Judge Mizelle held (1) qui tam relators are officers of the U.S. who must be appointed under the Appointments Clause; and (2) historical practice treating qui tam and similar relators as less than “officers” for constitutional purposes was not enough to save the qui tam provisions from the fundamental Article II infirmity the court identified. That ruling was appealed and, after full briefing, including by the government and a bevy of amici, the litigants stepped up to the plate this morning for oral argument....

View All Insights