Considerations In Divided Infringement Based On Recent Case Law

• Published date: 07 December 2022
• Subject Matter: Intellectual Property, Patent
• Law Firm: Wolf, Greenfield & Sacks, P.C.
• Author: Mr Hunter Keeton and Susmita Gadre

"Despite Akamai coming after Centillion and representing the views of the entire Federal Circuit, rather than just a panel of three judges in Centillion, recent case law supports the continued use of the Centillion test."

Divided patent infringement'also called "joint infringement"'is a doctrine plaintiffs can use to allege infringement where more than one party may have participated in a patent's claimed steps. While the fundamental rules here have been set since 2015, a few recent district court cases set out some new considerations for both plaintiffs and defendants.

The Ground Rules

A handful of U.S. Court of Appeals for the Federal Circuit decisions have been instrumental in shaping this area of law. The Akamai v. Limelight Networks case clarified that a single entity can be found liable for infringement if it "directs or controls" another's action or forms a joint enterprise. It also created a new test for finding joint infringement, if an entity conditions participation or receipt of a benefit on performance of the patented method, and controls the manner and timing of the performance. Later cases Eli Lilly & Company v. Teva Parenteral Medicines and Travel Sentry v. Tropp clarified how this "conditions or benefits" test applies in the context of pharmaceutical and mechanical method patents.

Ambiguities in Language

The Akamai standard remains good law, and recent cases have continued to apply this conditions/benefits test. Yet, a question remains. The legal community often uses the terms "divided infringement" and "joint infringement" interchangeably, but is this truly the case? The Northern District of California has suggested that the terms have separate meanings, with joint infringement being broader than divided infringement, but not providing further clarification. Sentius Int'l, LLC v. Apple Inc., 2020 WL 6081775 (N.D. Cal. Oct. 15, 2020).

It is possible that this judge thinks joint infringement could involve more than the prior known factors, or involve more than just direct infringement (e.g., induced infringement). On the other hand, the District of Nevada has noted that the Federal Circuit has appeared to prefer the term "divided infringement," even if parties also use "joint infringement." See Pure Parlay, LLC v. Stadium Tech. Grp., Inc., 2021 WL 94478 (D. Nev. Jan. 11, 2021). This could be a question for the Federal Circuit to clarify in the future.

Method vs. Systems Claims - Does the Centillion Standard Hold Up?

While divided...