Patent News

Direct Infringement for Method Patent When Connected Entity Performs Required Step

In Marley Mouldings, Ltd. v. Mikron Indus., Inc., 66 U.S.P.Q.2d (BNA) 1701 (N.D.Ill. 2003), the plaintiff commenced an action against the defendant for infringing its six-step process claim for wood moldings. Mikron moved for summary judgment of non-infringement claiming that it did not perform the first step of the process, creating wood pellets by encapsulating wood flour particles in a polymer resin. By purchasing “pre-made” wood pellets from a third party, Mikron argued it did not perform each step of the process, so there was no direct infringement. The court noted that neither the Supreme Court nor the Federal Circuit had addressed the direct infringement liability of a method claim where separate entities performed separate steps. The court noted that several district courts had found liability where the different steps of a method claim were performed by distinct entities, but also that the Fifth Circuit had questioned whether direct infringement could be found in such a case.

The court held that for there to be liability for direct infringement, the entities performing the steps must be connected in some way. “A party cannot avoid direct infringement merely by having another entity perform one or more of the required steps when that party is connected with the entity performing one or more of the required steps.” The court found that there was some connection between defendant and the pellet supplier. The pellets were made to order based on defendant's instructions, but there was a dispute as to how detailed the instructions were. The court held that since there was a material issue of fact as to whether defendant had control over the pellet supplier's process, summary judgment on non-infringement could not be granted.

These news items originally appeared in The Intellectual Property Strategist, an American Lawyer Media Publication.

Court Denies Preliminary Injunction on Infringing Product

The U.S. District Court for the District of Maryland denied a preliminary injunction against a product, even though, the court found it to infringe in Serio-US Indus., Inc. v. Plastic Recovery Techs. Corp., 2003 U.S. Dist. LEXIS 10074 (D.Md. June 5, 2003). Serio-US held a patent on an automatic dumpster lock and wanted to enjoin Plastic Recovery from showing an allegedly infringing prototype at a trade show. The court determined that the prototype device did infringe, but stated that the defendant could rebut the presumption of irreparable harm to the patentee. Evidence showing that the movant's market share dwarfed that of the non-movant, that there were several non-infringing competitors in the market, or that monetary damages could compensate for any actual harm suffered, was provided as examples of evidence that could rebut the presumption.

The court stated that because the defendant only had a prototype and had not actually entered the market, any harm to the plaintiff could be compensated by monetary damages. The court also noted that Serio-US had a substantial share of the marketplace and that there were several non-infringing competitors. The court held that “[t]he threatened harm by this limited exposure of a device that is not in production is, in the Court's belief, an insufficient basis on which to grant preliminary injunctive relief.”

Direct Infringement for Method Patent When Connected Entity Performs Required Step

In Marley Mouldings, Ltd. v. Mikron Indus., Inc., 66 U.S.P.Q.2d (BNA) 1701 (N.D.Ill. 2003), the plaintiff commenced an action against the defendant for infringing its six-step process claim for wood moldings. Mikron moved for summary judgment of non-infringement claiming that it did not perform the first step of the process, creating wood pellets by encapsulating wood flour particles in a polymer resin. By purchasing “pre-made” wood pellets from a third party, Mikron argued it did not perform each step of the process, so there was no direct infringement. The court noted that neither the Supreme Court nor the Federal Circuit had addressed the direct infringement liability of a method claim where separate entities performed separate steps. The court noted that several district courts had found liability where the different steps of a method claim were performed by distinct entities, but also that the Fifth Circuit had questioned whether direct infringement could be found in such a case.

The court held that for there to be liability for direct infringement, the entities performing the steps must be connected in some way. “A party cannot avoid direct infringement merely by having another entity perform one or more of the required steps when that party is connected with the entity performing one or more of the required steps.” The court found that there was some connection between defendant and the pellet supplier. The pellets were made to order based on defendant's instructions, but there was a dispute as to how detailed the instructions were. The court held that since there was a material issue of fact as to whether defendant had control over the pellet supplier's process, summary judgment on non-infringement could not be granted.

These news items originally appeared in The Intellectual Property Strategist, an American Lawyer Media Publication.