A fundamental precept of patent law teaches that a party is liable for direct infringement only when it performs each step of the invention’s claims. In a recent decision, District Judge Sue L. Robinson addressed infringement liability for those who perform less than all the claimed steps. The Court concluded that:
“The law of divided infringement . . . does prohibit infringement by defendants. In the circumstances where one party performs only some of the claimed steps, and another entity performs other of the claimed steps, direct infringement will only lie if one party exercises ‘control or direction’ over the entire process such that every step is attributable to the controlling party . . . .”
Absent this showing of control or direction, the Court held, summary judgment of non-infringement is appropriate.
Notably, the Court reached its conclusion after reconsidering an earlier claim construction. Because it raised the divided infringement issue, the new construction impaired the prospect of direct infringement, which in turn led to an increased likelihood of summary judgment. Litigators take note: this case is another example of how slight alterations to a claim construction can have a dramatic effect on the summary judgment phase.
Delaware IP Law Blog 