Solicitor General urges review of divided infringement problem
on Dec 13, 2013 at 10:04 am
The Solicitor General on Tuesday urged the Court to grant review in what could be yet another blockbuster patent case –involving the question of “divided” infringement. Divided infringement refers to a situation in which the acts necessary to infringe a patent are taken by multiple parties collectively, but no single party takes all the steps necessary to infringe the patent. The difficult question is determining when (if ever) infringement occurs in those cases. Traditionally, infringement occurs only if a single party has “control or direction” over all the steps necessary to infringe the patent. In practice, that standard has not worked well. Among other things, it has in some noteworthy cases involving financial services patents rendered the patents essentially nugatory — if the services in question customarily are delivered through a network of multiple participants, then “control or direction” test will mean that there rarely (if ever) would be an infringing party even if the patented technology is pervasively adopted.
That problem is even harder for patents involving technologies that are distributed over the Internet or wireless networks. In this case, for example, Akamai has a patented method for structuring web sites and their servers to handle Internet traffic more efficiently. Under the conventional test discussed above, their patent would not be infringed by competitors adopting the technology. The Federal Circuit responded by taking the case en banc and adopting a much looser test for infringement, which looks to the doctrine of “induced” infringement. Under that test, a party that does not itself infringe is liable for infringement if it “knowingly induces others” to take the necessary steps that the inducing party fails to take. The decision was closely divided, with five dissenting votes.
I would read the Court’s request for the views of the Solicitor General here as a strong suggestion that a grant is likely — more in the nature of checking to see if there is some unobserved defect with the case. It seems plain that the question is a difficult one, and most informed observers probably would agree that the statute simply fails to consider the complexity of a topic that was much less important when the Patent Act was written than it is now.
`Now that the Solicitor General has recommended a grant, plenary review should come in short order. The case is probably not as significant as Bilski or Alice Corp., but the dollars at stake should produce a blizzard of amicus briefs.