Ramifications of Joint Infringement Theory on Emerging Technology Patents

39 Pages Posted: 27 Mar 2012 Last revised: 17 Jan 2013

See all articles by W. Keith Robinson

W. Keith Robinson

Wake Forest University School of Law

Date Written: 2010


Two cases decided by the U.S. Court of Appeals for the Federal Circuit articulate the standards for joint infringement. In BMC Resources, Inc. v. Paymentech, L.P., the court ruled that to find liability in situations where steps of a method claim are performed by multiple parties, the entire method must be performed at the control or direction of the alleged direct infringer — the mastermind. Approximately one year later, in Muniauction, Inc. v. Thomson Corp., the Federal Circuit clarified that “the control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.”

District courts have attempted to apply the holdings of BMC Resources and Muniauction in the two years following the Federal Circuit’s decisions. In deciding their cases, district courts have focused on how the asserted claims are drafted and the relationships between the accused infringer and third parties. Absent significant evidence of how an accused infringer controlled third parties, patent holders have found it difficult to support claims of infringement under a joint infringement theory. Further, courts have suggested that carefully drafted claims directed to a single actor would eliminate the need for patent holders to rely solely on joint infringement theory.

Keywords: joint infringement, divided infringement

Suggested Citation

Robinson, Walter Keith, Ramifications of Joint Infringement Theory on Emerging Technology Patents (2010). Texas Intellectual Property Law Journal, Vol. 18, No. 3, Spring 2010, SMU Dedman School of Law Legal Studies Research Paper No. 105, Available at SSRN: https://ssrn.com/abstract=2028783

Walter Keith Robinson (Contact Author)

Wake Forest University School of Law ( email )

P.O. Box 7206
Winston-Salem, NC 27109
United States
3367582230 (Phone)
3367584496 (Fax)

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