What Will Be the Standard for Direct Infringement for Method Claims?

Much has been written about the Supreme Court’s recent Akamai decision.  However, a more interesting topic is whether the Federal Circuit will revisit its standard for direct infringement of a method claim. In Muniauction, the Federal Circuit held that for direct infringement of a method claim to occur, all of the claimed steps have to be attributable to a single actor, either by performing them itself or by directing or controlling others to perform them. In Akamai, the Supreme Court appeared to question this standard, stating that “[a]ssuming without deciding that the Federal Circuit’s holding in Muniauction is correct…” and allowing the Federal Circuit the opportunity “to revisit the § 271(a) question if it so chooses.”  Even though it acknowledged that under the Federal Circuit’s standard, a party could evade liability by dividing up performance of the steps of a method claim with another which the party did not direct or control, the Supreme Court was unwilling to create a new standard for indirect infringement that did not have a statutory basis. Until the Federal Circuit changes the law, the Muniauction standard stands- i.e., there can be no direct infringement of a method claim if all the steps are not attributable to one actor.  More importantly, if there is no direct infringement, there can be no indirect infringement. Patent prosecutors should keep this in mind when crafting claims and clients should consider this when they participate in a multi-step process.  Claims should be drafted to ensnare a single actor and clients should evaluate whether one entity directs or controls an entire process when a method patent claim is at issue.

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