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.