Multiple Joint Infringers of Process Claims: How Close Is Close Enough?

Process claims often contain more than one step so that, in some cases, the combination of the activities of two or more parties may fulfill all of the steps of a multi-step claim. For example, one court found a defendant liable for direct infringement although another party performed one of the steps of the asserted claim. Metal Film Co. v. Milton Corp., 316 F. Supp. 96, 110 n.12 (S.D.N.Y. 1970). The case law addressing when the combination of activities is sufficient for infringement has arisen mainly at the district court level, and courts have found that certain combined activities constitute direct infringement while other combinations do not. Generally speaking, if multiple parties perform different steps of a process claim, a court may find direct infringement if the parties have 'some connection' to each other. See Faroudja Labs., Inc. v. Dwin Elecs., Inc., 1999 WL 111788, *5 (N.D. Cal. 1999). This standard is open to interpretation, and, not surprisingly, courts have considered how much of a connection is necessary in order to tack together the parties' activities to find infringement.

When courts find that parties actively and deliberately work in concert, the 'some connection' requirement typically is fulfilled. See Free Standing Stuffer, Inc. v. Holly Devel. Co., 187 U.S.P.Q. 323, 333 (N.D. Ill. 1974); see also Shields v. Halliburton Co., 493 F. Supp. 1376, 1388-89 (W.D. La. 1980), aff'd, 667 F.2d 1232 (5th Cir. 1982). For example, in Free Standing Stuffer, the court found infringement where three separate entities were 'essentially all one operation,' 'alter egos of each other,' and it was unlikely that 'any one person or company would itself physically perform all of the steps of the claim.' Free Standing Stuffer, 187 U.S.P.Q.2d at 333. In the Shields case, the court similarly indicated that '[i]nfringement of a patented process or method cannot be avoided by having another perform one step of the process or method.' Shields, 493 F. Supp. at 1389 (citing Metal Film, 316 F. Supp. 96). Although a level of connection between the parties amounting to an agency relationship or concerted activity typically is not required to show 'some connection,' not all types of interactions between parties satisfy the 'some connection' standard. See Hill v. Amazon.com, Inc., 2006 WL 151911, *2 (E.D. Tex. 2006). For instance, in a case involving consumer operation of a quality im-provement device on videos converted from film, the court held that a copyright license existing between the device consumer and film-to-video transfer company was an insufficient connection to satisfy the standard. Faroudja, 1999 WL 111788, at *6.