Patent Damages

Joint infringement; hypothetical negotiation need not be split, rules EDTX

Joint infringement issues are cropping up with increasing frequency.  Joint infringement generally arises in the situation where two or more infringers jointly perform the steps of a method claim, and none performs the method alone.  Thus, the plaintiff cannot prove direct infringement by a single entity—instead the direct infringement only occurs when two or more entities are considered together.  Prior to the Federal Circuit’s decisions in BMC Resources, INc. v. Paymentech, 498 F.3d 1383 (Fed. Cir. 2007), and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), joint infringement liability could exist in situations where there was some relationship between entities that together perform the method steps (e.g., defendant and defendant’s customer).  After Paymentech and Muniauction, the law now requires more than a mere undefined relationship.  The defendant must “control or direct” the actions of the other entities who perform method steps.  This is referred to as the “mastermind test.”