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September 04, 2012



Nice write up on this "monster" decision. That we have a badly fragmented decision here is not a surprise. The real problem here is that Section 271 and all of its subsections is simply outdated and obsolete when it comes to interactive computer-based technologies; I've seen this problem since at least as early as 2003 and wrote about it in a 2007 article. If we're to have infringement issues involving technologies requiring multiple actors dealt with fairly, consistently, and effectively, Section 271 needs a comprehensive overhaul. (And I share your concern that the majority view is in for a "rough ride" if SCOTUS reviews this en banc decision.)

Kevin suggests that adding yet more old steps to the claim in Prom may well be more "robust" and so implies that they might get past 101. Lulz.

Actually, 6, it isn't my suggestion - it's from the PTO. Maybe you should share your erudition with the powers that be in your own house.

Dear EG:

I think it's simpler than that for most cases (like this one) - direct infringement must occur, and so long as you are not pursuing an "innocent" infringer you are OK. The real problem comes from the circumstances - if there are several steps, many of them performed in common with many other processes/methods, is the infringer the person who performs the "new" step? What if there isn't a new step - if all the steps are known but have not been put together before? Or have not had a particular result? Is the ISP always liable? Never (absent some active, affirmative actions)? What if the "deep pocket" is practicing the "old" steps in the method?

Which is why the majority approach - that infringement requires intent, mens rea - at least can separate the innocent sheep from the guilty goats.

I don't think the statute can ever parse finely enough to fix the situation, even forgetting how unlikely it is that we could get a balanced bill from Congress.

Thanks for the comment.

"Actually, 6, it isn't my suggestion - it's from the PTO. Maybe you should share your erudition with the powers that be in your own house."

I already have been. They are a tough crowd. One wonders if any of them (at least the higher up folks) are familiar with the basic premise that they are here to apply the law rather than their own personal agenda. It seems that the lower level folks are not so opposed to simply applying the law, but there are some in the management who apparently want no part of it.

"I don't think the statute can ever parse finely enough to fix the situation, even forgetting how unlikely it is that we could get a balanced bill from Congress."


How true, especially given the history behind Section 271(f)(intended to overrule SCOTUS' Deepsouth Packing ruling but then making infringement liability possible without even requiriing the claimed invention be practiced as long as you intended that the entire claimed invention be practiced). I was just "waxying lyrical" with a "sigh" to what I said in the conclusion to my 2007 article on enforcing patent rights involving transnational technologies, primarily those involving the Internet (the NTP v. RIM decision was my primary "poster child").

Relative to the draconian "one actor" rule of Linn, (and the very expansive "more than one actor" rule of Newman), the per curiam majority rule does strike a balance that those who try to "play games" and really have the requisite "intent" to induce infringement that causes practice of the entire claimed invention (e.g., all steps of the claimed method) shouldn't get off the hook on a bare technicality (which the 4 dissenting Justices in Deepsouth Packing "screamed" about to no end). The Fromson decision you cite (written by the late Chief Judge Markey) definitely supports the per curiam majority's approach.

And be careful with that phrase "direct infringement": the majority viewed that phrase one way (and even phrased it differently as "actual infringement"), while Judge Linn viewed in what I call the "traditional" Section 271(a) way. Anyway, we've likely not heard the end of this "sad tale" by a long shot. Peace.

I doubt most companies would view any change in the law that broadens the scope of activities that could be infringing as a "boon." Viewing from the patent drafter's perspective is but one side of the coin. And, indeed, from corporate side of things, it is probably the most irrelevant angle.

The majority goes much further than just giving patent drafters another claim drafting tool, it brings in whole categories of infringement and whole other sets of actors that previously -- in my opinion, correctly -- removed from the analysis.

I seriously doubt that most companies would find the prospect of being liable for the actions of their customers' customers (e.g., McKesson case involving steps of hospital systems' doctors and those doctors' patients) actions as a "boon".


I think the "boon" is not being limited by the questioon of whether there is one infringer rather than that there is predicate literal infringement occurring. Who gets sued (and it won't be patients or consumers) will likely be those who are actively encouraging infringement (and profiting from it). And being able to stop that is, in fact, a boon to the patentee.

Thanks for the comment

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