A Turning Point?

Since its decision in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007), the Federal Circuit has continued to raise the bar for direct infringement of a method claim where the claimed steps are performed by different entities. According to BMC Resources, direct infringement of a method claim under such circumstances can be attributed to a so-called mastermind that exercises “control or direction” over the performance of each step of the claimed method. Id. at 1381. Control or direction by the mastermind was held to be found whenever the law would traditionally hold the mastermind vicariously liable for the steps of the claimed method performed by another party. Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1330 (Fed. Cir. 2008) (citing BMC Resources, at 1379). The control or direction by the mastermind has since evolved to require an agency relationship between the parties who perform the method steps, or a contractual obligation imposed on another party to perform the method step(s) not performed by the mastermind. Akamai Techs., Inc. v. Limelight Networks, Inc., 629 F.3d 1311, 1320 (Fed. Cir. 2010), reh'g en banc granted, 2011 U.S. App. LEXIS 8167 (Fed. Cir. 2011). The Federal Circuit recently adhered to this test for “control or direction” in upholding summary judgment of non-infringement in McKesson Techs., Inc. v. Epic Systems Corp., 2010-1291 (Fed. Cir. 2011). But based on the sentiments from the panel members in McKesson, the opinion in Akamai may set the high-water mark for method claim patent infringement by multiple parties acting in concert.