Introduction to Method Patent Infringement

People typically think of patent infringement in a black and white manner as the unauthorized use of another person's invention; however, infringement becomes more complicated for method patents.  A method patent - unlike a product patent - involves several steps a user must perform to achieve a particular result.  What if one user does not perform all of those steps?  What if, instead, one user performs some of the steps, causing another person to perform the other steps? 

One might instinctively think that in such a case the patent owner would or should still have some recourse, under a theory of indirect infringement, against at least one of the parties participating in performing the patented method steps; however, the reality is that if the performance of every step of the patented method cannot be attributed  to a single actor or entity, none of the parties that participated collectively in performing the patented method has any liability. 

This concept, known as induced or contributory infringement, was dealt with by the U.S. Supreme Court in Limelight Networks, Inc. v. Akamai Technologies, Inc. 134 S. Ct. 2111, 2119, 2120 (2014).  The Court ruled that a defendant can be liable for induced or contributory infringement of a patented method only if a single entity directly infringed the patent by performing all of the method's steps.  Most recently, the court noted that the case involved neither agency nor contract nor joint enterprise.  Encouraging or instructing others to perform an act is not the same as performing the act oneself and does not result in direct infringement.  Akamai v. Limelight, 797 F.3d 1020 (Fed. Cir. 2015) (en banc)

In Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) the court held that “an infringer’s control over its customers’ access to an online system, coupled with instructions on how to use that system, was not enough to establish direct infringement”.  Accordingly, actions by third parties only count toward infringement if those parties are acting as agents of or under the control and direction of  the single direct infringer.  Absent some clear nexus or cooperation connecting the multiple entities’ respective performance of discrete claimed method steps, courts have been unwilling to extend liability when, only together with anotherʼs activities, did one entity perform all the steps of a patented method.

Therefore, under U.S. law, neither contributory nor induced patent infringement liability can exist without direct infringement and direct infringement requires that an entity perform each and every step of a patented claim.

FOR IMMEDIATE RELEASE:

Friday, September 9, 2016

Paul Harrison and Ferro Corporation Settle TherMark Patent Infringement Lawsuit

Los Angeles, CA -- Paul W. Harrison and Permanent Impressions, Inc. announced that they have settled the patent infringement lawsuit originally brought in Federal District Court by TherMark LLC in March 2013 against Harrison, Permanent Impressions and certain of their distributors for the manufacture, sale and use of various laser marking materials. 

In February 2015 TherMark was purchased by Ferro who assumed responsibility for the ongoing dispute which involved TherMark’s contention that Harrison, Permanent Impressions and their distributors were infringing its patented laser technology that enables the permanent marking, identification and decoration of various types of products and materials.  No finding of patent infringement was ever rendered and, as a result of the settlement, all parties acknowledged no liability and mutually agreed to cease all litigation and not to sue, arbitrate or litigate the subject matter of the 2013 lawsuit in the future. 

Permanent Impressions, Inc dba Laser Bonding Technology continues to sell its various LaserBond ^tm 100 products directly to customers worldwide using the Internet and its e-commerce capabilities.   

About Ferro Corporation

Ferro Corporation (NYSE: FOE), located in Mayfield Heights, Ohio (www.ferro.com) is a leading global functional coatings and color solutions company that supplies technology-based performance materials such as glass-based coatings, pigments and colors, and polishing materials, including the CerMark and TherMark laser marking products. Ferro products are sold into the building and construction, automotive, appliances, electronics, household furnishings, and industrial products markets. Headquartered in Mayfield Heights, Ohio, the Company has approximately 4,880 employees globally and reported 2015 sales of $1.1 billion.

About Paul W. Harrison and Permanent Impressions, Inc.

Paul W. Harrison founded TherMark LLC in 1996 and is the inventor of its patented laser marking technology.  After selling his interest in TherMark, Harrison founded Permanent Impressions, Inc. (www.laserbondingtech.com)  which manufactures and sells the LaserBond ^tm 100 brand of laser marking products.  Harrison continues to be involved with the sale of laser marking hardware and the further development of new and unique laser marking materials.  These patent pending products produce permanent marks on most metal, glass, ceramic, plastic and stone surfaces for use in product identification, serialization and decoration in a variety of industrial and artistic applications within major industries ranging from medical, automotive, electronics and aerospace to the awards, trophies and personalization business.  

For further information go to:  www.laserbondingtech.com  and subscribe to the Mailing List Check out the Blog and post your comments

Or contact:  Paul W. Harrison   Tel:  (213) 819 5069    email:  me2paul@aol.com