Suppose I invent a new chemical molecule. I begin testing the molecule to determine its usefulness. After testing, I determine that when the molecule is combined with certain other ingredients to form a drug, it exhibits a utility in killing cancer cells. I find that administering the drug by a novel method maximizes the cancer-killing ability of the drug. Finally, I develop a novel way to manufacture the drug that can increase its potency.
Based on this information, what can I patent? Assuming that each of the inventions is novel and non-obvious, I have a number of options. First, I should write claims directed to the molecule itself. Then, I can keep anyone from making, using, offering for sale, selling, or importing this molecule for any purpose. That would be pretty good protection.
But, I’m concerned that someone might find prior art that shows that this molecule (or an obvious variation) was actually discovered a number of years ago. Therefore, I should also try to protect that drug that includes this molecule as the active ingredient. I will not be able to prevent others from using the molecule for other purposes, but again, anyone who makes, uses, sells, offers for sale, or imports the drug (putting aside FDA approval) would be infringing claims to the drug.
Again, let’s assume that the drug itself is not patentable. It has been used before to treat baldness. Because the use of the drug to treat cancer is new and patentable, I should prepare claims that are directed to methods of treating cancer (or killing cancer cells or something similar) by administering the drug. Now, what can I stop others from doing? The molecule can still be made, the drug can still be made; I can only protect the method of using of the drug to treat cancer. Who actually performs the steps this method? Probably the doctor, maybe the patient. Do I really want to sue doctors or patients for infringement? I might be able to sue the manufacturer for indirect infringement if they contribute to or induce infringement of these claims by the doctor or patient.
A similar analysis applies to the novel method of administrating the drug. Again, the doctor is probably the direct infringer of such a claim because the manufacturer of the drug does not perform the steps of administration. Conversely, if I claim the novel method of manufacture, that claim would be infringed by the manufacturer and not by the doctor or patient.
The inventors in Akamai developed an improved method for storing web page content. Limelight sought to avoid infringement of the claims by having some of the method steps be performed by its customers rather than itself. Akamai sued under the theory of joint infringement arguing that Limelight provides specific instructions to its customers to perform the missing method steps to infringe the claims of the patent.
Although the jury agreed with Akamai and found Limelight liable for infringement, the district court disagreed and set aside the jury’s verdict. The Federal Circuit affirmed.
The Federal Circuit held that joint infringement requires more than merely direction or even control. It requires that the acts of one party can be attributed to the other, such as through an agency or contractual relationship. The court then rejected Akamai’s argument that Limelight’s customers were acting as agents of Limelight, as well as the argument that the customers had a contractual obligation to perform the infringing method steps. The court held that the contract did not require the customers to perform the method step, but only explains the steps that should be undertaken if the customer wants to take advantage of Limelight’s service.
The lesson from the Federal Circuit is one that they have given many times:
[T]his court has noted that such concerns can usually be offset by proper claim drafting. A patentee can usually structure a claim to capture infringement by a single party.
So again, proper claim drafting is key. When preparing the claims for a patent application, it is not enough to merely ask what the invention is; one must also ask who would be the infringer and how claims should be prepared to permit the patent owner to prevent infringement by that infringer.
Last week, the Federal Circuit agreed to hear Akamai en banc to decide the question:
If separate entities each perform separate steps of a method claim, under what circumstances would that claim be directly infringed and to what extent would each of the parties be liable?
Perhaps the court will ease the requirement of agency or contractual relationship for a finding of joint infringement. The lesson regarding proper claim drafting, however, remains. The Federal Circuit continues to instruct inventors and patent attorneys to take more care when preparing patent applications and claims.