The Divided Infringement Defense in a Post-Akamai World: Still a Threat to Pharmaceutical Patent Holders?

Gasper J. LaRosa and Landon R. Clark

©2016. Published in Landslide, Vol. 8, No. 5, May/June 2016, by the American Bar Association. Reproduced with permission. All rights reserved. This information or any portion thereof may not be copied or disseminated in any form or by any means or stored in an electronic database or retrieval system without the express written consent of the American Bar Association or the copyright holder.

Under the Federal Circuit’s 2008 decision in Muniauction, Inc. v. Thomson Corp.,1 a “method’s steps have not all been performed as claimed by the patent unless they are all attributable to the same [party].”2 In other words, a single actor must perform each and every step of a method claim in order for there to be direct infringement.3 The exception to this rule allows for two or more actors to “jointly infringe” a method claim when one actor exercises “control or direction” over other actor(s) who perform the remaining steps.4 “Joint” or “divided” infringement jurisprudence developed largely in cases involving software, computing, and business method patents, under the veil of industry concerns that broad patents and troll litigation threatened to strangle innovation and dampen market growth.5

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