California Patent Attorney - California Patent Lawyer

California - China overtook the United States and Japan as the world's top patent filer in 2011. The Chinese government offered incentives for Chinese businesses to file patent applications with the goal of turning the country from a "made in China" producer to a "designed in China" innovator.

Published applications from the patent office in China have been steadily rising an average of 16.7% each year. In 2006, China had 171,000 applications. By 2010 the number of applications had risen to 314,000, bringing China's worldwide holdings from 54% up to 58%. China may have a high filing number, but according to the World Intellectual Property Organization, or WIPO, patent applications are also up worldwide. WIPO Director General Francis Gurry cited an emphasis on a "knowledge economy" and "globalization led by U.S. and Chinese innovation" as causes of the rise.

Experts suggest that in order for the world's second largest economic power to truly become the world's innovation leader, it will also need to improve the quality of its patents. The government awarded Chinese businesses incentives for filing even if a patent was not eventually granted. As a result, high filing figures did not necessarily correlate to the patents actually granted. The number of patents granted in the United States, Japan, and certain European countries is still higher than in China.

A report by Thomson Reuters projects that published patent applications from China will total approximately half-a-million in 2015. It anticipates that the United States and Japan will produce nearly 400,000 and 300,00, respectively, that same year.

China is focusing on developing intellectual property rights in technology, automobiles and pharmaceuticals. It offers broad patent protection in most industry sectors. According to Articles 5 and 25 of Chinese Patent Law, items not patentable include inventions or creations detrimental to public interest or social morality, inventions related to certain genetic resources, certain scientific discoveries, methods for mental activities, methods for diagnosis and treatment of diseases, animal and plant varieties, substances created by nuclear processes and two-dimensional designs that serve as indicators.

California - British Telecom, an England-based phone company recently filed suit against Google for its Android smartphone technology. The company claims the Android operating system infringes on six British Telecom patents.

British Telecom filed suit in a Delaware district court and claims that Google Search, Google Maps, Google Music, Android Market, Google Plus, and Adwords infringe on its patents. Adwords, Google's location-based advertising, accounts for a large proportion of its revenues. The damages British Telecom seeks will likely amount to billions of dollars. British Telecom claims some counts should be trebled due to deliberate and willful infringement. In addition, British Telecom seeks injunctions against the sale of infringing products, possibly resulting in Android phones being pulled from store shelves in the United States.

The first patent encompasses a technology allowing Google Music to signal to a user that a certain music service is available depending on the user's location and hot spot connectivity. The second patent allows Google Maps to convey current information such as data about tourism, public transport, and traffic via a handheld device. The third patent is based on user preferences and relates to several Google applications such as Google Maps and Google Search. The fourth patent relates to customer data storage and digital rights, such as user profiles stored on Google's servers that users can access through the Android phone. The fifth patent covers the method by which Google Maps provides users with driving and walking routes. The sixth patent encompasses location-based information used by Google Maps and Google Maps Navigation.

Google also faces patent infringement allegations from Oracle. Android producers Samsung and HTC face suits from Apple and Microsoft. If these suits are successful, Google may have to pay royalties for each Android phone produced and sold. Android phones currently account for forty percent of the company's sales, and 500,000 new phones are activated each day.

California - The U.S. International Trade Commission (ITC) ordered a ban on HTC handset imports to the United States in a final ruling this week. The ban will take effect on April 19, 2012 allowing wireless carriers to modify their plans.

Apple initially claimed that HTC infringed on several of its patents, but the commission focused on a single patent involved with detecting data. The patent, number 5,946,647, encompasses a "system and method for performing an action on a structure in computer generated data," and was granted in 1999. The technology allows a smartphone user to tap on a recognizable format such as an address or phone number from an e-mail or a website. The phone immediately locates the address on a map or dials the phone number.

Under the ban, the HTC Corporation will still be allowed to import refurbished mobiles to satisfy warranties. The patent will affect a small part of overall phone function and HTC may remove the feature from infringing phones without rendering the entire phone unusable. Other phones may also be affected by the ban.

This ruling is the latest in a larger dispute involving the ITC and federal courts, encompassing HTC and other phone makers who are accusing each other of stealing technology. Apple wants the courts to award damages, and the commission to block imports of infringing products.

HTC is a Taiwan based company with offices in Bellevue, Washington. It developed the G1, the first Android smartphone, and built a market share featuring the company's unique Sense user interface. In an earlier October ruling, the ITC held that the Apple iPhone did not violate four HTC patents. It is the first Android supporting company Apple has targeted, foreshadowing possible future litigation due to a growing threat of Google software affecting the iPhone market.

California - The European Commission is opening an investigation against Dupont Co. and Honeywell International Inc. into whether they concealed patents and patent applications necessary to develop automobile refrigerant, known as Solstice 1234yf, during the development of standards pertaining to that technology. Honeywell and Dupont jointly developed an automobile refrigerant for air conditioning systems for all new cars sold in the European Union (EU) beginning in 2017, replacing the previously-used ozone-depleting chlorofluorocarbons (CFCs) refrigerant. As the sole providers of this refrigerant, EU antitrust regulators are investigating whether Honeywell and Dupont entered into anti-competitive arrangements over the joint development, licensing, and production of the refrigerant.

Further, EU regulators are also investigating Honeywell after receiving complaints of deceptive conduct with regards to Honeywell's business practices. Honeywell has been accused of not disclosing patents and patent applications to the Society of Automobile Engineers when developing the standards for the automobile refrigerant and failing to grant licenses on fair and reasonable terms.

Complainants allege Honeywell has committed a patent ambush which occurs when a company withholds relevant information to a standard-setting organization creating a standard in favor of the withholding company. Any company wishing to license the productwould have to pay a substantial royalty, effectively creating a barrier to entry into the market.

French company Arkema filed a complaint with EU regulators in April, 2011 arguing that Honeywell and Dupont did not engage in fair and reasonable negotiations for licensing the automobile refrigerant. Arkema said in a statement, "Arkema will continue to fully collaborate to the investigation which purpose of which is to clarify the legal environement related to Honeywell andDupont`s patents."

EU Competition [Antitrust] Commissioner Joaquin Almunia stated, he wanted to make sure that intellectual property rights "are used to reward inventions and motivate innovation and not as tools to foreclose access for expansion in markets."

Honeywell's spokesperson Peter Dalpe, maintains that the company's actions were compliant with the law and that "the Commission will conclude that we acted in full compliance with European Union competition rules." Dupont also contends that its actions complied with the law and that they will cooperate with the investigation.

If found in violation of European antitrust laws, Honeywell and Dupont could be fined up to 10 percent of yearly sales or required to change business practices that harm competition.

California - Amazon was recently granted a patent that allows them not only to track where users have recently been but predict where they may go in the future. The system analyzes the past and current locations of the user, and based on this information, it predicts a likely next destination of the user.

Next, it communicates this next likely destination to marketers who then can relay advertising content to the user whether via their mobile device or flashing billboards. The ads that appear will be based on the demographics of the user. To ensure maximum visibility, the ads will also take into account the speed and mode of travel of the user so advertising appears at the expected time the user reaches a given marketing point. For example, if you are a middle-aged parent walking in a mall and you have already passed by one portion of a mall, ads might start popping up on your phone for stores that sell children's clothing or home goods that you have yet to pass. Information of where the user comes from and is likely to go next could be stored in a database and better predict where others may go in the future for more targeted marketing.

While Amazon's purpose is to better target ads and coupons to the user, at what point does infringing on a person's right to privacy become worth the savings of a coupon? Amazon has yet to release information that allows users to block this information or even more specifically, block ads from companies and stores they wish not to patronage.

Further, another major cause of concern for users is the vulnerability of this information being accessed from individuals who would wish to cause harm to the user. With the continually increase in data theft and phone hacking, criminals or stalkers could gain access to this sensitive marketing data and hone in on a victim's future location. Amazon will have to invest in highly sophisticated encrypting software to protect the integrity of the information and calm user's concerns.

California - Members of the European Parliament (EMPs) are in the process of negotiating an agreement to establish a unified patent system where a single patent could be filed in the European Union (EU) for participating nations. On December 5, 2011, the EMPs' Legal Affairs Committee approved a mandate to set up negotiations on creating a unitary patent system, a standardized language scheme, and a unified patent court. If an agreement can be finalized, then the measure must next be approved by the European Parliament, as well as 25 out of the 27 European member nations for it to go into effect (Italy and Spain have formally objected to the unified patent system measure and have opted out from being bound). If approved, the new patent system is expected to go into effect by 2014.

It is widely anticipated that a unified patent system would make the EU patent process more financially competitive with its counterparts in the United States and Japan. If established, it is expected that a unified patent system would cut costs for filing a patent in the EU by 80% and avoid the legal difficulties of obtaining and defending a patent in various nations with differing national patent laws and court systems. It has been estimated that the average cost of obtaining a European-wide patent under the current system is about $42,000 while the average cost for the same patent in the US is estimated at $10,000.

Currently, to obtain patent protection in the EU, an applicant must file a patent application in each individual country in which they seek protection and obtain a translation of the application into each country's native language, increasing the costs of the patent application. EMPs have put forth a proposal where an applicant could initially file an application in any official language recognized in the EU. However, once the patent is granted, it will only be published ineither English, French or German and then, only translated into the remaining two languages that it was not initially published in. For example, a patent application filed in Greece in the Greek language, if granted, could initially be published in English, and then only available in German and French translations.

Establishing a unified patent court poses more difficulties for negotiators in resolving how the court will be financed, what language the court would operate in, and the operable statute of limitations for patent holders to bring matters before such unified patent court or in an EU member national court. Along these lines, the Polish presidency of the Council of Ministers stated "In order to ensure legal certainty for patent holders and third parties, in particular alleged infringers and the workability of the system creating the European patent with unitary effect, the establishment of a unified patent litigation system is essential. It is therefore necessary that the ratification of the draft agreement takes place and Court becomes fully operational as soon as possible."

California - Aerospace manufacturer Boeing Chicago was recently issued a patent for an "aircraft configuration utilizing fuselage, wing, empennage, and exhaust flow control devices" designed to enhance aircraft performance. The patent abstract claims that the design will utilize structural and engine exhaust flow control devices to enhance the in-flight performance of the craft.

Boeing first filed the patent application in 2009. The recently issued patent, U.S. Patent No. 8,061,655, credits a group of ten inventors, mostly from California and Washington state. The design includes the use of an Upper Surface Blown (USB) system downstream from the engine exhaust plume as well as a controllable USB to promote engine exhaust flow. Boeing hopes that the new design will eliminate what the patent describes as a "pitching moment" that would have been caused by the old USB system. Eliminating the pitching moment caused by uncontrolled engine exhaust would increase performance and provide for a smoother flight.

Founded in 1916 in Seattle, Washington, Boeing has been in a serious battle lately with European giant Airbus which is its largest competitor. Boeing merged with aerospace manufacturer and defense contractor McDonnell Douglas in 1997. Currently headquartered in Chicago, Illinois, Boeing is one of the world's two largest aircraft manufacturers and the world's third largest aerospace and defense contractor. By value, Boeing is the U.S.'s largest exporter. Since the merger with McDonnell Douglas, Boeing's largest competitor has been Airbus. Together the two companies dominate the commerical aircraft market.

California - Suzanne Brown, employee for Tuscon, Arizona based Lisa Frank, Inc. is not entitled to relief for alleged patent theft by her former employer in state court, an Arizona appellate court held. Instead, she must pursue her claim in federal court which has exclusive jurisdiction over patents granted by the United States Patent and Trademark Office (USPTO).

Brown returned to work at Lisa Frank after a ten year absence in 2009. Once she began work, she notified the company that she had conceived of an idea for a child-safe oven. Working with other employees, Brown created a sketch of the oven and its details. The company submitted the sketches to its patent attorney who filed a patent and trademark application with the USPTO for the oven without notifying Brown. Brown was later terminated.

Brown originally brought the action in Arizona's Pima County Superior Court alleging several causes of action for breach of contract, unjust enrichment, and wrongful ownership and control of the invention. That original action, however, was dismissed upon motion by Lisa Frank for lack of subject matter jurisdiction. Brown then appealed the case to an Arizona appellate court which affirmed the lower court's dismissal of the case.

Under the Supremacy Clause found in the United States Constitution, federal law preempts state law when congress expressly provides for preemption, federal law leaves no room for state law, or where state law and federal law conflict. 28 U.S.C. § 1338 provides that "The district courts shall have original jurisdiction of any civil action arising under any Act of Congress relating to patents..." That jurisdiction is exclusive to the extent that it involves federally issued patents.

In this case, Brown argued that though federal law has preempted the patent system, inventors still maintain common law state rights over their inventions and that these rights are enforceable in state court. The appellate court disagreed, holding that Congress reserved the determination of inventorship to the USPTO and that such a determination is within the exclusive jurisdiction of the federal courts. As Brown's action depended on the resolution of a "substantial question of federal patent law," federal law preempted the state court's jurisdiction in this matter.

California - The Federal Circuit affirmed the Delaware district court's grant of judgment as a matter of law in favor of noninfringement and conclusion that the patents at issue were not unenforceable due to inequitable conduct.  In the court's opinion, the justices describe the case as, "but one installment - albeit, at nearly fourteen years, perhaps the longest - in an ongoing and epically expensive saga known as the 'Stent Wars.'"

On October 3, 1997, Cordis filed suit against multiple defendants for patent infringement of its heart stents for coronary artery disease.  The heart stents can be deployed by inflatable balloon to clogged arteries to expand and open up the artery.  When Cordis named Boston Scientific Corp. as one of the defendants, the company probably did not foresee itself engaging in over a decade of legal battle.

Particular to BSC's case, Cordis alleged that BSC's NIR stent infringed Patents 5,643,312 ('312 patent) and 5,879,370 ('370 patent).  Five years later in 2002, a jury found that BSC's NIR stent did not infringe the '312 patent, but did infringe the '370 patent.  Thereafter, the district court judge granted JMOL that the NIR stent did not infringe the '370 patent.  Additionally, the court held a bench trial on the issue of unenforceability due to inequitable conduct.  The court ultimately held that both patents were unenforceable because the patentees "purposefully neglected their responsibility of candor to the PTO by 'putting their heads in the sand'" with respect to known prior art references and for disclosing prior art references "in the midst of numerous other references and without identifying it as being of particular interest."

When the case reached the Federal Circuit on appeal in 2006, the Federal Circuit declined to address the issues of infringement, and remanded to the district court for further evidence regarding intent to deceive.  By 2010, the district court made additional findings and, surprisingly, reversed its earlier decision on inequitable conduct.  The court held that there was not clear and convincing evidence of deceptive intent and that each of the parties' arguments was equally persuasive.  Therefore, contrary to its earlier ruling, the court held that both patents were enforceable.

Renewing their initial appeals, the parties brought the suit to the Federal Circuit a second time.  This time, the Federal Circuit construed the claim construction given to the jury to determine whether the decision of noninfringement was proper.  Ultimately the Federal Circuit agreed that with the correct jury instruction construction, that the decision of noninfringement was proper because a reasonable jury would not be able to find infringement.  Additionally, the Federal Circuit affirmed the district court's decisions on no inequitable conduct.

Continue reading ""Stent Wars" - Will the Federal Circuit Decision in Cordis Corp. v. Boston Scientific Corp. Finally End Fourteen Years of Patent Litigation?" »

California - After years of debates over patent reform, the U.S. Senate finally passed the America Invents Act Thursday, making major changes to America's patent laws. The 89-9 vote will be signed by President Obama just days after the United States Patent and Trademark Office (USPTO) issued its 8 millionth patent.

There are five key changes taking place in the new patent reform that will affect entrepreneurs, inventors, tech companies, and the USPTO. The five key pieces include:

First to File: The current patent system operates under the first to invent rule, which means that whoever can prove to a court of law that they invented something first can force another party into a legal battle over the patent. With the new first to file system under the America Invents Act, whoever files the patent first will get protection. Although much more clear-cut, some small businesses and entrepreneurs argue that it gives an advantage to large businesses that have the money to quickly file for patents.

Post-Grant Review: Currently, the USPTO has a procedure to re-examine patents after they have been issued, but it is very limited in its scope. Under the new process, inventors will have the ability to challenge a patent within nine months of its issuance by presenting the USPTO with evidence against the patent's validity. The upside is that this could potentially reduce some of the expensive patent litigation lawsuits, but opponents say that it is just another responsibility that will be placed on an already over-burdened Patent Office.

Fee collection Overhaul: Under the existing system, Congress establishes the fees that are collected by the Patent Office and also controls its budget. With the America Invents Act, the USPTO will be able to determine its own fees. Congress will continue to have budgetary power but the collected fees exceeding the budget will be placed into escrow and the USPTO can petition for their release. The reformed patent laws will stop Congress from siphoning money out of the USPTO budget, and allow the entity to keep all of the fees it collects.

Lack of Patent Lawsuit Reform: Although it was suggested and included in some earlier versions of the new patent bill, there is no new process in the America Invents act for determining damages in a patent infringement case. For the foreseeable future, juries may continue to award large sums of money for patent violations.

Software and Business Method Changes: There are a few minor provisions in the America Invents Act that clear up the debate over the propriety of software patents. One provision, for example, specifically excludes tax preparation software from a rule prohibiting the patenting of tax strategies, and another provision creates a way to defeat patents related to financial products, with the goal of eliminating a certain group of patents for check-imaging software.

California - Patent application 20110195187 describes an invention entitled "Direct Liquid Vaporization for Oleophobic Coatings." While the title of the invention has little hope of becoming a household name, it's likely that Apple's new fingerprint-less screens will make their way into millions of households. According to Patently Apple, the application filed February of this year describes a method of applying an 'oleophobic' substance to the screen of any Apple iOS device during manufacturing. This process would create a fingerprint resistant coat on the screen of the device capable of repelling the oil and particles from our hands that create cosmetically unfavorable and visually obstructive smudges. The invention would certainly create a captivating marketing platform for Apple, but larger implications arise concerning how competitors will work around the patent to maintain the viability of their products within what some are calling a 'patent war.' Apple will have a have new weapon if they control the licensing of a process that renders fingerprints a thing of the past.

Patent application 20110194230 comes to us from the mind of Amazon CEO, Jeff Bezos, who has created a method of protecting cell phones from impact damage by equipping them with airbags. The application filed February of 2010, made public earlier this month, details a system in which the phone detects a sudden increase in acceleration when the phone is accidentally dropped by its user and deploys airbags to prevent a damaging impact with the ground. It's difficult not to snicker at the thought of airbag-deploying cell phone, but the application also suggests substituting the airbags with springs or gas propulsion, and if they are able to find an effective method, the precautionary equipment would prove to be valuable to many fumbling consumers who spend hundreds of dollars annually on replacement phones. However, the money saved will likely be applied to increased price of cell phones containing this preventative technology. It will be interesting to see whether airbags become the industry standard or simply a short-lived novelty item.

California - Google's recent acquisition of Motorola Mobility for approximately $12.5 billion raised more than a few eyebrows. However, now that the dust from the deal has begun to settle, the reasoning behind the deal has become clear and an interesting trend has appeared.

To fully understand the deal, a little history is required. Google purchased a small company called Android Inc. in 2005, cumulating in the 2008 release of the Android Mobile Operating System. Android is beloved by users, and its market share quickly rose to rival that of Blackberry. More importantly, Android was a departure from other operating systems because it was open source, meaning Google actively encouraged individuals to experiment with the software code.

Then, in late 2010, Google released its first and only smartphone, the Nexus One. However, the Nexus One achieved only lackluster sales. After the news of Google's acquisition of Motorola Mobility broke, the hope of a widely successful combination of Motorola's hardware acumen and Google's open source spirit spread like wildfire.

Experts estimate that a smartphone can involve to up to 250,000 different patents. Due to the millions of dollars in sales that any given smartphone can accomplish, even one patent infringement lawsuit can become a huge obstacle. Therefore, companies have been spending millions (or billions in this case) to acquire entire companies in an effort to expand their own patent portfolios while at the same time avoiding litigation.

With Google's acquisition, which could become a game-changer in the smartphone industry, the value of tech companies is increasingly becoming a function of the number of patents that the company owns.

California - A federal jury in San Diego ruled today that Microsoft must pay telecommunications infrastructure manufacturer Alcatel-Lucent, $70 million in damages in a judgement from a patent infringement claim from 2003.

The patent at issue was originally applied for by engineers at AT&T and provides a method of entering information into fields on a computer screen without the use of a keyboard. Initially, Alcatel-Lucent filed a claim against computer giants Gateway and Dell for their alleged infringement of the patent in 2002, with Microsoft intervening.

At an earlier trial involving the same parties, Microsoft was found guilty of infringing on the patent in its Outlook e-mail software, Windows Mobile, and with Microsoft Money. The original ruling would have cost Microsoft more than $500 million in damages, however it appealed the decision and the damages were lowered considerably.

In a statement from David Howard, Microsoft's corporate vice president and deputy general counsel of litigation, he said, "Today's verdict reflects a positive trend in the law of patent damages stemming from the Federal Circuit's earlier opinion in this and other cases. However, we continue to maintain that current law requires a genuine apportionment of damages when the infringement is directed to a small feature of a feature-rich product, and we are reviewing the verdict in that light and considering next steps."

This patent infringement case in particular is the most recent in a long history of litigation between the two companies. Microsoft was also the defendant in a patent infringement complaint filed with the U.S. International Trade Commission by Alcatel-Lucent over technology to identify and affiliate a user in a telephone network. The ITC ruled in favor of Alcatel-Lucent. Another patent case involving a communications protocol patent designed to allow a host computer to communicate with a "terminal device" resulted in a split ruling.

Lawyers for Alcatel-Lucent indicated that the company was "pleased" with today's ruling.

California - Reversing an earlier panel judgment, the Federal Circuit in Therasense, Inc. v. Becton, Dickinson and Company reviewed en banc the standards for inequitable conduct in patent infringement cases. A judge-made equitable defense that originated from the doctrine of unclean hands, proving inequitable conduct can completely bar the enforcement of a patent. To show inequitable conduct, an accused infringer needs to show that the patent applicant had "misrepresented or omitted material information with the specific intent to deceive the PTO."

The court sought to reduce inequitable conduct as a significant litigation strategy, as its use had led to undesirable consequences such as expanding discovery into corporate practices, discouraging settlement, and taking attention away from issues of patent validity and infringement, due to its focus on the moral character of the patentee. Describing inequitable conduct as "the atomic bomb of patent law," the court noted that where most defenses are claim specific, inequitable conduct is able to render entire patents unenforceable, with the potential to even endanger other patents in a patentee's portfolio. The en banc decision addressed both the "intent to deceive" and "materiality" elements of the defense.

While courts in the past have often used a gross negligence standard to determine the intent element for inequitable conduct, the Federal Circuit raised the bar to a clear and convincing standard. The patentee needs to be shown to have known of a reference, known that the reference was material, and made a deliberate decision to withhold it from the PTO. Due to the difficulty of finding direct evidence of intent, the Court held that intent could be inferred from indirect and circumstantial evidence, but the clear and convincing standard meant that the specific intent to deceive be "the single most reasonable inference" that could be drawn from the evidence.

In addition to intent, the Court also raised the standard of materiality. To satisfy the materiality standard, the misrepresentation had to be the but-for cause for the patent claim's issuance. The Court held that the preponderance of evidence standard would apply and that claims would be given their broadest reasonable interpretation when determining whether the PTO would have allowed a claim had it been aware of the undisclosed material.

The Court also rejected the intent-materiality sliding scale that had been used in earlier cases. No longer can a weak showing of intent be allowed based on a strong showing of materiality; the two elements must be determined independently.

In making its ruling, the Court hoped to achieve better proportionality between the violation and the remedy. Because the doctrine of inequitable conduct could render an entire patent, potentially even an entire family of patents, unenforceable, the Court sought to restrict its use and ensure that it would only be applied in situations where a patentee through its misconduct has gained an "unfair benefit."

California - In April, the Federal Circuit decided the case of McKesson Technologies Inc. v. Epic Systems Corp., ruling that to show infringement of a patented method, the performance of all the steps of the method must be attributable to a single party. The decision, which included a majority opinion, a concurrence, and a dissent, illustrates the division in the court in dealing with interactive method patents and new technologies.

McKesson's patent described a method involving personalized web pages in order to facilitate the communication between doctor and patient. Epic Systems manufactures a software product called MyChart, which it licensed to software providers and allows medical providers to associate a patient's medical records with a personalized web page. None of the providers require the patient to use the MyChart software; the patient must initiate the communication. "Initiating a communication" is an essential step in McKesson's patented method, and it is around this step where most of the argument lies.

Writing the majority opinion, Judge Linn based his holding on three previous cases: BMC Resources v. Paymentech LP, Muniauction v. Thomson, and Akamai Technologies v. Limelight Networks Inc. In order for McKesson to successfully allege induced infringement, there must first be direct infringement, which for a method patent, according to BMC, requires the performance of each step in the method by a single party. When multiple parties come together to perform the steps of the method, it is only directly infringed if one party exercises "control and direction" over the entire process. Muniauction held that the "control and direction" element would be satisfied when the accused direct infringer could be found to be vicariously liable for the acts committed by the other parties. Akamai stated that for the actions of one party to be attributable to another, there must be an agency relationship or contractual obligation between the parties.

Finding no such relationship between the medical providers and the patients, as the patients were neither agents of the providers nor contractually obligated to use MyChart, Judge Linn found that no direct infringement had occurred as the performance of the method could not be attributed to a single entity under the "control and direction" test.

Judge Newman's dissent asserted that creating an absolute "single-entity rule" was an unacceptable enlargement of the holding in BMC, and that none of the cases the majority cited "turned on whether different entities independently or interactively perform different steps of the method claim." Instead, the existence of joint liability needed to turn on "participation, collaboration, or other relevant facts." Newman wrote that the majority holding, by limiting infringement for interactive method patents, "eliminates the patent incentive" for such methods, by making them "open for infringement without redress."

Judge Bryson's short concurrence opinion stated that decision was correct in light of BMC, Muniauction, and Akamai, but questioned whether the three cases were themselves correct, and expressed the opinion that an en banc review might be needed to resolve the issue.

If you have a patent infringement matter, we are patent litigation attorneys so please feel free to contact us.