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The Intellectual Property StrategistKickerFeaturesTopicsCommercial LawTechnology Media and TelecomSectionsNewsLJN Newsletters

Muniauction v. Thomson

By John M. Cone
September 29, 2008

In Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed.Cir. 2008), Muniauction asserted a patent covering a method for conducting electronic auctions of financial instruments, such as municipal bonds. A jury found the claims were not obvious, that Thomson had willfully infringed, and that Muniauction was entitled to lost profits damages, which the court set at $77 million. Thomson moved for judgment as a matter of law or for a new trial. The district court denied the motion, finding substantial evidence in favor of the jury's verdict upholding the validity of the claims.

On appeal, the Federal Circuit reversed, finding certain of the claims obvious and the remainder not infringed. The opinion illustrates the Federal Circuit's application of the Supreme Court's decision on obviousness in KSR Int'l Co. v. Teleflex, Inc., 127 S. Ct. 1727 (2007) and confirms the Federal Circuit's own decision on “joint or divided” infringement in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1379 (Fed. Cir. 2007). The KSR ruling makes it easier to establish obviousness invalidity when the difference between the claimed invention and the prior art is the application of the test from BMC Resources, holding that a party which did not itself perform all of the steps of the claimed method could be a direct infringer, liable not only for its own acts but for those who performed the balance of the steps, only if it directed or controlled the other actors.

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