No 'Direction' Home: An Alternative Approach to Joint Infringement

Abstract

U.S. start-ups continue to create new technologies that provide a high degree of connectivity between consumer devices such as mobile phones. In order to protect their innovations, many companies acquire patents that contain method claims covering interactive technology. To successfully enforce a patent when more than one party performs all of the steps of a claimed method, the Federal Circuit has held under its joint infringement doctrine that the patentee must show that one of the alleged infringers “directed or controlled” the actions of the other party. Perceptive parties that form a relationship that does not rise to the level of “direction or control” can use and benefit from new interactive technologies without being liable for patent infringement. This loophole in the law should be closed. However, several commentators have suggested that patentees can avoid this fate by drafting better claims. Unfortunately, given today’s advances in technology, even expert claim drafting cannot protect a patentee from an unauthorized use of their innovative method.

This article analyzes the development of joint infringement theory, including the Federal Circuit’s recent rehearing of it’s own decisions, in conjunction with recent advancements in technology. This article argues that the law should not focus solely on the nature of the relationships between relevant actors. Instead, this article suggests an alternative approach that relies on practical considerations the law traditionally considered in contributory infringement analysis. The goal of this approach is to increase the likelihood that the law will enforce deserving interactive methods while balancing valid concerns that ignoring the relationship between the parties will ensnare innocent actors.

Keywords: joint infringement, Akamai, McKesson