Patent Law Practice Center

Rocky Mountain IP Conference: Joint Infringement Update

R. David Donoghue, author of Chicago IP Litigation blog and Practice Center Contributor, recently attended the 9th Annual Rocky Mountain IP & Technology Institute.  David will be writing several articles on the highlights from the Institute.  The first two articles  focused on the Judges panel wherein they discussed best practices in intellectual property litigation.  In this article, David discusses Scott Alter‘s (of Faegre & Benson) presentation on joint and divided infringement.

One of the excellent sessions at the conference was Scott Alter’s presentation about the state and history of joint and divided infringement.  Here are some of the highlights:

• BMC v. Paymentech (2007): This case involved method claims directed to separate parties — caller, debit processor & bank. The parties agreed that no single party performed each step. The Federal Circuit said Section 271 required one party to perform every step, unless one defendant played a “mastermind” role. BMC had argued that plaintiff just needed to show participation and combined actions. Court noted that patentee could have drafted the claims to apply to a single entity. (more…)

Divided Infringement: Strategies For Drafting Claims

Dale Lazar, Partner at DLA Piper and Practice Center Contributor , sent in this article discussing divided infringement and how it generally pertains to large systems and corresponding methods.  Lazar will be speaking tat PLI’s Patent Law Insitute this Thursday, February 17th. The following is an excerpt from the aticle.

Divided infringement issues are most likely to arise in the context of large systems and corresponding methods, where multiple parties may contribute to or participate in the system.  A common instance where divided infringement is likely to arise is a network of computers where the functionality of the system is distributed across the computers of the network.  The network employed to connect the computers may be a LAN/WAN and/or the Internet.  Particularly where different computers perform different functions for the overall system, the different computers may be owned or operated by different parties, typically with each party not being controlled by other parties involved with the system.

Included at the end of this paper is a patent application directed to a “Reliance Server for a Transaction System”.  In many ways, the invention is typical of Internet-based inventions – inventions that are implemented over an open communications channel, such as the Internet.  The application has been simplified to focus on only a few of the features of the invention.  Please read the application as a basis for understanding the following remarks concerning divided infringement. (more…)