News Item
“Mastermind” requirement for joint infringement determinations(08/13/10)
In Golden Hour Data Systems, Inc. v. emsCharts, Inc. (Fed. Cir. August 9, 2010) the Court of Appeals for the Federal Circuit affirmed a judgment as a matter of law by the Eastern District of Texas court of no joint infringement of certain process claims of Golden Hour’s U.S. patent 6,117,073 for an “Integrated Emergency Medical Transport Data Base System.” Sometimes patents have process claims that are not infringed by any one party; joint infringement occurs when two or more parties together practice all of the limitations of the patent claim. In Golden Hour, the defendants emsCharts, Inc. and Softtech, LLC each provided software that, when used together, infringed the process claims of the ‘073 patent. The Federal Circuit characterized the relationship of the two defendants as a “strategic partnership” that “enabled their two programs to work together” and the defendants “collaborated to sell the two programs as a unit.”
Judges Dyk and Friedman agreed that “[w]here the combined actions of multiple parties are alleged to infringe process claims, the patent holder must prove that one party exercised ‘control or direction’ over the entire process such that all steps of the process can be attributed to the controlling party, i.e., the ‘mastermind.’” The majority of the panel concluded, without any further explanation, “that the evidence of control or direction was insufficient as a matter of law to uphold a finding of joint infringement.” This applied also to the systems claims of the ‘073 patent, by stipulation of the parties. Judge Newman dissented and argued that the collaboration or partnership of two defendants could result in joint infringement even if no “controlling party” existed. The Golden Hour case may not stand if it is taken up for review by all of the judges of the Federal Circuit (en banc review). But if it remains law, it offers new possibilities for infringement without penalty and reminds patent applicants that careful drafting of claims is necessary to avoid having to rely on theories of joint infringement during litigation and licensing negotiations.
close window