BMC and Muniauction Still Require a Single Actor for Direct Infringement

The Federal Circuit has refused to find direct patent infringement where a single party did not carry out, or at least control, all acts alleged to constitute infringement.  Voter Verified, Inc. v. Premier Election Solutions, Inc., Nos. 2011-1553, 2012-1017, 2011-1559, 2012-1016 (Fed. Cir. Nov. 5, 2012).

Perhaps this holding should not be surprising.  However, the Federal Circuit did partially overrule BMC Resources, Inc. v. Paymentech, L.P ., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), when it recently held in Akamai Technologies, Inc. v, Limelight Networks, Inc., that induced patent infringement does not require a single actor.  The Voter Verified case now at least implicitly reaffirms that BMC and Muniauction continue to govern the law of direct infringement, and thus is consistent with the Akamai majority’s statement that it did not “revisit any of those principles regarding the law of divided infringement as it applies to liability for direct infringement under 35 U.S.C. § 271(a).”

In this case, independent claims 49, 85, and 93 of U.S. Reissue Patent RE40,449 recited “methods for voting, each explicitly requiring that several of the claimed steps must be performed by the voter.”  The patent owner contended “that the computer program of the [accused system] controls all of the voter’s actions . . . to complete the process of voting.”

Noting that, under “BMC and Muniauction, liability for direct infringement of a method claim requires that one party either performs every step of the claimed method or exerts direction or control over any such steps performed by others,” the Federal Circuit here rejected the patent owner’s argument.  The fact that the voting system controlled the voter’s access did not amount to the “direction and control” of the voter’s actions required by BMC and Muniauction, and could not support a finding of direct infringement.

This case offer several other interesting holdings, discussed in a prior post on this blog, among them that an article that could be found on the Internet, although unindexed by search engines, could be a prior art “printed publication” under 35 U.S.C. 102(b).

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