Sharp Divisions Over Joint Infringement

May 09, 2011

May 9, 2011 (Mountain View, CA) – Michael Sacksteder, partner in the Litigation Group of Fenwick & West LLP, was recently quoted in the National Law Journal article "Sharp Divisions Over Joint Infringement."

The article addresses situations when more than one person performs the steps of a patented process. In these cases, courts have ruled that joint patent infringement only exists when an individual or a single company controls the entire process.

With Federal Circuit Judges and patent bar members arguing that this leaves many patents worthless, the US Court of Appeals for the Federal Circuit has agreed to an en banc rehearing in one of these cases, Akamai Technologies Inc. v. Limelight Networks Inc. This decision could impact the validity of many method patents, including those surrounding Internet, software or telecommunications technologies.

How the Federal Circuit views joint infringement has "become an important piece of a defense lawyer's tool kit over the past several years," said Michael Sacksteder.

He went on to say that BMC, then Muniauction, changed the rules for lawsuits involving method patents by requiring that one entity perform all the steps of each patent case. In Akamai, the decision went even further by requiring one entity to mastermind the process.

Many of the patents affected by these rulings were written decades ago, before it was clear that the law would develop in this direction, Sacksteder continued. "There is probably some sense among some judges at the Federal Circuit that that has blindsided the patent owners."

Sacksteder said that when a client is accused of infringement, his first step is checking for method claims, and whether they were performed by different entities. "A change in the law would in some way change how the playing field is structured."