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{ 1C6302F5-3E01-40CA-93D7-BE365
{117251}{54-110714:111708}{070511}

D44CF02}

AMICUS BRIEF

Nos. 2009-1372,-1380,

1416, 1417

UNITED STATES COURT OF APPEAL

FOR THE FEDERAL CIRCUIT

AKAMAI

TECHNOLOGIES,
INC.,
Plaintiff-Appellant
and
THE MASSACHUSETTS
INSTITUE
OF
TECHNOLOGY
V.

LIMELIGHT
NETWORKS,
INC.,
Defendant-Cross
Appellant.

FBLED
U.S. COURTOF APPEALSFOR
TltF r;r_r_R_l CIRCUIT

3UL05 Z011
jmvnut_dALY
CLERK

APPEALS
FROM THE UNITED
DISTRICT
OF MASSACHUSETTS
JUDGE RYA W. ZOBEL.

STATES DISTRICT
COURT FOR THE
IN NOS. 06-CV-11109
AND 06-CV-11585,

AMICUS CURIAE BRIEF OF

BIOTECHNOLOGY
INDUSTRY
ORGANIZATION
IN SUPPORT
OF NEITHER PARTY

John W. Ryan

OF COUNSEL
Hans Sauer, Ph.D.
Biotechnology
Industry
1225 Eye Street, N.W.,

Washington, DC 20005

Organization
Suite 400

Thomas M. Haas
Sullivan & Worcester
1666 K Street, NW
Washington,
DC 20006
202-775-1200

202-962-6695
Attorney for Amicus Curiae
Biotechnology
Industry Organization
July 5,2011

CERTIFICATE

Counsel

for the amicus

curiae

OF INTEREST

Biotechnology

Industry Organization

certifies

the

following:
1.

The full name

of the amicus

BIOTECHNOLOGY

2.

that we represent

INDUSTRY

is:

ORGANIZATION

The name of the real party in interest that we represent

BIOTECHNOLOGY

3.

All parent

corporations

INDUSTRY

and publicly

or more of the stock of the amicus

4.
curiae

now or are expected

to appear

Hans Sauer, Ph.D.

Biotechnology
Industry Organization
1225 Eye Street, N.W., Suite 400
Washington,
DC 20005

ORGANIZATION

held companies

curiae that we represent

The names of all firms and partners

is:

or associates

that own

10 percent

are: None

that appeared for the amicus

in this Court are:

John W. Ryan
Thomas M. Haas
Sullivan & Worcester
1666 K Street, NW
Washington,
DC 20006

Attorney for Amicus Curiae

Biotechnology
lndustry Organization

{W0222962;

I}

TABLE

I. INTEREST

OF AMICUS

II. SUMMARY

OF CONTENTS

...............................................................................

OF THE ARGUMENT

III. ARGUMENT

............................................................

PROPRIETARY

COMPANIES

RELY

HEAVILY

ENTITY RULE SHOULD NOT

FOR DIVIDED
INFRINGEMENT

C. PRINCIPLES

OF TORT

{W0222962;

1}

FOR

ON ...........

PROCESSES

B. THE SINGLE
STANDARD

IV. CONCLUSION

................................................................................................

A. BIOTECHNOLOGY

TEST

DIVIDED

LAW

SHOULD

INFRINGEMENT

BE THE ...........
CLAIMS

INFORM
LIABILITY

..........................................................................................

10

THE
........

15

30

TABLE

OF AUTHORITIES

Cases
AFL-CIO
Alpine

v. FEC, 333 F.3d 168 (D.C. Cir. 2003) ............................................................

Glass, Inc. v. Ill. Farmers

,O*,D,O,,O,O,*._..O,,O.H

Aro Mfg.

Ins. Co., 2011 U.S. App. LEXIS

*.H..o,*l*.*,...,*.,,

Co. v. Convertible

,,...

....

*,

Top Replacement

o*o.,.....*.o

10

12237 (8th Cir. 2011)

,..,...**,.,,,,..,

Co., 365 U.S.336,

,*,,..***l,,*

341 (1961) ........ 23

Aro Mfg. Co. v. Convertible

Top Replacement
Co., 377 U.S. 476 (1964) ........................
16
Aro, 365 U.S., at 342 ....................................................................................
12, 16, 23, 26
Barrv.
United States, 324 U.S. 83, 91 (U.S. 1945) ........................................................
11
Caminetti v. United States, 242 U.S. 470, 485, 37 S. Ct. 192, 61 L. Ed. 442 (1917) ..... 11
Carcieri
Dawson

v. Salazar, 129 S. Ct. 1058, 1063-1064 (U.S. 2009) ........................................

Chemical Co. v. R ohm and Haas Co., 448 U.S. 176, 180 (1980) .....................

11
24

DeGeorge v. United States Dist. Ct. for the Central Dist. of California, 219 F.3d 930, 939
(9th Cir. 2000) ..............................................................................................................
10
Doddv.

United States,

545 U.S. 353,359,

125 S. Ct. 2478,

162L.

Ed. 2d 343 (2005).11

Dowagiac Mfg. Co. v. Minnesota

Moline Plow Co., 235 U.S. 641, 648 (1915) ....... 15, 17
E.I. DuPont De Nemours and Co. v. Monsanto Co., 903 F. Supp. 680, 735 (D. Del.
1995) .............................................................................................................................
17
EMIGrp.
N. Am., Inc. v. Intel Corp., 157 F.3d 887, 896 (Fed. Cir. 1998) .......................
Emtel, Inc. v. Lipidlabs,
Inc. 583 F.Supp.2d 811,839 (S.D.Tex.2008)
..........................

14
27

Engine Mfrs. Assn. v. South Coast Air Quality Management

Dist., 541 U.S. 246, 252
(2004) .............................................................................................................................
9
Fromson v. Advance Offset Plate, Inc., 720 F.2d 1565 (Fed. Cir. 1983) .............. 3, 24, 25
Global-Tech Appliances,
inc. v. SEB S.A. (2011) ..........................................
21, 22, 25, 27
Hardt v. Reliance Std. Life Ins. Co., 130 S. Ct. 2149, 2156 (U.S. 2010) ........................
11
Hartford Underwriters
Ins. Co. v. Union Planters
1942, 147 L. Ed. 2d 1 (2000) ...............................
Hydril

Co. LP v. Grant Prideco

Bank, N. A., 530 U.S. 1, 6, 120 S. Ct.

........................................................
11

LP, 474 F.3d 1344, 1355 (Fed. Cir. 2007) ....................

16

Krehbiel v. Travelers Ins. Co., 387 Fed. Appx. 827, 829 (10th Cir. 2010) .................... 12
Lamie v. United States Trustee, 540 U.S. 526, 534, 124 S. Ct. 1023, 157 L. Ed. 2d 1024
(2004) ...........................................................................................................................
11
Mahood v. Caldwell, 33 Ohio App. 292, 297 (Ohio Ct. App., Summit County 1929) .. 12
Merck & Co. v. Reynolds,
130 S. Ct. 1784, 1795-6 (2010) .............................................
12
Metal Film Co. v. Milton

Corp., 316 F. Supp. 96 (S.D.N.Y.

1970) ................................

17

Microsoft Corp. v. i4iLtd. P'ship, 2011 U.S. LEXIS 4376 (U.S. June 9, 2011) .............. 9
N. Am. Phillips Corp. v. Am. Vending Sales, Inc., 35 F.3d 1576, 1579 (Fed. Cir. 1994) .15
New Jersey Patent Co v. Schaeffer,
159 F. 171 (E.D. Pa., 1908) ...................................
17
On Demand

Machine

Park 'n Fly v. Dollar

Shields v. Halliburton
{W0222962;

I}

Co. v. Ingrain

Industries,

Inc., 442 F.3d 1331 (Fed. Cir. 2006) .... 16

Park & Fly, 469 U.S. 189, 213 (U.S. 1985) .................................
Co., 493 F. Supp. 1376, 1389 (W.D. La. 1980) ..........................

13
17

Sony Corp. Am. v. Universal

Stafford

v. Briggs,

State v. Sample,

444 U.S. 527, 536 (U.S. 1980) ..........................................................

215 Wis.2d

Train v. Colorado

City Studios, Inc., 464 U.S. 417, 435 (1984) ......................

Public

487, (1998)

Interest

13

........................................................................

Research

11

Group, 426 U.S. 1, 9-10 (1976) ................

United States v. Culbert, 435 U.S. 371,374,

n. 4 (1978) ................................................
United States v. Nam Van Hoang, 636 F.3d 677 (5th Cir. 2011) .....................................

16

13
13
10

United States v. Oregon & C. R. Co., 164 U.S. 526, 541 (U.S. 1896) ............................
11
Warner-Jenkinson
Co., Inc. v. Hilton Davis Chem. Co., 520 U.S. 17, 40, (1997)..23
Statutes
1U.S.C.

1 ......................................................................................................................

1 U.S.C. 1 1 .....................................................................................................................
35 U.S.C. 271 ..........................................................................................................
Other

11
9
10, 25

Authorities

Restatement

(Second)

of Torts ..................................................................................

19, 20

The Law of Patents for Useful Inventions,

Section 904, n.2 (1890) ...............................
12
The Law of Patents, Trade-Marks,
Labels and Copyrights 378 (2dnd ed. 1884) ........... 12
U.S. Const., art. I, 8, el. 8 .............................................................................................
13

{W0222962;

1}

I.

INTEREST

OF AMICUS

The Biotechnology
representing
centers.

biotechnological
the healthcare

diseases.

healthcare,

products

to market

in clinical

the decades

to protect

to come.

approval

technology

transfer

real-world

solutions

processes,

and method

company's

{W0222962;

1}

products.

In

has more than 370

to treat more than 200

are small companies

patents
against

needed

that is necessary
for disease,
patents

that have yet to

by different

infringers,

entities,

products

in the partnering

basic life science

and hunger.

Proprietary

them, often count among

assets.

Because

and because

on the
in

circumvented,

biotechnology

biotechnology

and to engage

that protect

be unfairly

enable

to advance

to translate

rely heavily

and to grow their businesses

that cannot

pollution,

business

its members

technologies

to the marketplace,

most valuable

often practiced

and industrial

trials being studied

in this case because

their platform

support

regulatory

of

and attain profitability.

enforced

to secure the financial

industry

of BIO members

Enforceable

that can be predictably

and biotechnology

and development

environmental

the biotechnology

BIO has a great interest

system

institutions,

in the research

agricultural,

currently

The vast majority

(BIO) is a trade association

academic

are involved

sector alone,

bring a product

patent

Organization

of over 1100 companies,

BIO members

therapeutic

Industry

and

companies
through
and

discoveries

into

biotechnological
a biotechnology

the steps of such processes

patent claims

to such processes

are
are

often capable

of being practiced

clear, ascertainable
circumventing
activities.

separately,

rules of infringement

infringement

Accordingly,

liability

BIO members
liability

by dividing

BIO submits

that discourage

this brief to assist this Court's

of patent law in a tempered,

accommodate

technologies

unforeseen

consequences

this case, nor have the parties

In the interest
public

interest

its present

to this litigation

contributed

SUMMARY

in the issuance

of enforceable

for analyzing

infringement
these questions

way that will

of all and guard

against

disposition

of

this brief.

ARGUMENT

patents,

divided

system

and protecting

the

BIO urges this Court to refine

infringement

claims

by abandoning

to review

ARGUMENT
closely-related

in two en banc cases, Akamai

are interrelated

to the Court's

1}

long-standing

entity rule."

This Court has decided

{W0222962;

THE

the U.S. patent

III.

response

from

infringing

predictable

or the specific

to preparing

OF

of strengthening

legal framework

the "single

in

in the life sciences.

BIO has no stake in the parties

II.

to the benefit

interest

parties

up their otherwise

efforts to guide the evolution

new emerging

have a strong

and McKesson.

and dependent

en banc orders

questions

of"joim"

Because

or "divided"

BIO's

on each other, BIO below

replies

provides

in both the instant case and in McKesson.

to
its

In its en banc order in Akamai,

If separate

entities

circumstances

BIO

answers

the claim

is shown

every

on whether
element

claim,

together

to perform

direct

party

infringement
all steps

to be too limiting,
contractual

acts,

one party

exercises

of a method

impairs

performed

1}

liability,

if every

or process.

under

35 USC
liable

would

element

Because

of
direct

271 (a) should

for the practice

by parties

of

method,

a single

the claim

of patents

circumvention

actor scenarios.
in clear concert

of a
under
party

This Court's

test

relationship

or

party's

control

over the

of multiple

parties

combine

is directly
process

i.e., the 'mastermind').

claims without

works

that a single

of an agency

over the entire

party,

of infringement

parties.

the actions

of a

the state of mind

has required

the existence

all steps

than one party

Because

establishing

function

by permitting

acting

more

this Court

requiring

of valid patent

multiple

performs

the existence

or direction'

the incentive

one party

acts of all the infringing

to the controlling

inventions

"noninfringing"

method

claim.

at 1329 (there

'control

leaves holders

patentable

infringed

also exists when

step of a claimed

step is attributable

when

relationship

Muniauction

every

seriously

and to what extent

can be held strictly

to determining

the infringing

to perform

standard

is directly

liability

to the situation

is irrelevant

or control

an equivalent

{W0222962;

offense,

271 (a) and its resulting

infringing

claim

in the accused

the accused

patent

infringer

has proven

infringed

claim, under what

of the claim.

method

Section

A method

liability

In addition

direct

steps of a method

that claim be directly

to be present

is a strict

separate

be liable?

as follows:

infringement
depend

each perform

would

each of the parties

this Court poses the question:

a patent

infringed

such that every

This restrictive

infringement

for an increasing

only if

number

remedy
of

in the form of contrived

BIO believes

that when activities

to practice

the steps of a patented

are
process

and

claim, Section
relationship,

271(a)

not be read to preclude

or an equivalent

the acts performed

infringement

agreement

for the benefit

liability,

Requiring
incapable

should

solution

by multiple

to address

entities

one party to completely

party, may be sufficient

to structure

the divided

claims

infringement

infringing,

Liability

in each case, requires

i.e., that it incorporates

either literally
infringement

separate

steps

liability would

all elements

induces"

lie where the accused

perform

separate

liability

would lie where the accused

performance
the infringing

for inducing

a predicate

or under the doctrine

if it "actively

I}

claim,

under what

party be liable
See Fromson

for
v.

or contributory

that the accused

of the claim, in the claimed

method

is

combination,

A party would be liable for inducing

practice

of the patented

party actively

induced

multiple

constitute

party, in addition

under Section

entity rule is

first question:

the infringing

4
{W0222962;

infringement

the infringing
to actively

of claim steps by others, is itself a participant

Liability

single

of a method

showing

of equivalents.

claim steps which, together,

method.

direct

problem.

circumstances,
if any, would either entity or any third
inducing
infringement
or for contributory
infringement?
Advance Offset Plate, lnc., 720 F.2d 1565 (Fed. Cir. 1983).

infringement,

all

so that they are

this Court posed the following

each perform

BIO replies as follows:

control

to establish

actors to avoid this Court's

In its en banc order in McKesson,

1. If separae

An agency

should be a prerequisite.

in the alternative,

of being practiced

an unacceptable

of another

but neither

patentees,

requiring

all liability.

method.

Thus,

actors to each
method.

inducing

in the practice

Likewise,

the
of the steps of

271(b) should not be precluded

merely

because

the accused

party actively

Liability

under Section

accused

party can be held strictly

under Section

271(c) permits,

providing

because

pre-1952

no (one/single)
of the claim

circumstances,

for use in practicing

the practice

primary

infringer/party

conduct

of the inducer

liability

even though

Section

for those who contribute

to the

of a patented

process.

method

combination

of an inducement

simply

while knowingly

because

of the accused

contributory

infringement

Accordingly,

BIO submits

no (one/single)
Indeed,

by a single or multiple

inducer.
if it provides

Finally,

entities,

the

that, so long as all

claim are met, liability should not turn on whether

steps of the claim were practiced

participation

the same.

or by

It would defy logic to deny

can be held strictly liable for direct infringement.

remains

no

liable, would be

one or more steps of a process

of all steps of the infringing

and

both 271(b) and (c).

a component
a patented

party actively

method

and thus primary

policy underlying

of a claim by, e.g., providing

inducing

inducing

of all steps of the infringing

for a direct act of performing

{W0222962; 1}

conduct.

of every element

where the accused

party can be held strictly,

under defined

a material

the elements

infringing

merely

liable for the practice

liability

with the common

infringement

should not be precluded

the practice

accused

consistent

liability

inducement

induces

(one/single)

in the primary

271(a).

To permit
knowingly

271(b)

participated

or with or without

the
the

a third party would be liable for

a material

or apparatus

for use in practicing

the

patented

method

if separate

under circumstances

steps of the infringing

that meet the requirements

method

In its en banc order in McKesson,

2. Does the nature

provider/user;
infringement

BIO replies:
perform

The formal

liability.

Indirect

method

infringement

legal relationship

liability

others to each perform

circumstances

Direct

separate

liability,

with due regard to the strict liability

entities

second

question:

actors - e.g., service

the primary

actors that directly

of indirect

on whether

infringement

the accused

of the patented

claim steps which, together,

that party contributed

that meet the elements

infringement

in the practice

271 (c), even

of direct or indirect

between

should depend

induced

or whether

the relevant

should not affect the question

or not itself an active participant

method,

between

- affect the question

whether

infringing

by separate

this Court posed the following

of the relationship

doctor/patient
liability?

the infringing

are practiced

of Section

party,

method,

constitute

to such infringement

actively
the

under

of section 271 (c).

on the other hand, should be decided

nature Section

271(a),

flexibly

as set forth in section

and
C of

this brief below.

' Thus, for example, a party may be liable for inducing infringement
method for administering
a drug if that party actively induces the separate
the steps of the method by a physician
relationship between these two actors.
for contributory

infringement

and a patient, irrespective

Under like circumstances,

if it provides

of the formal legal

a party may be liable

the drug for use in such infringement.

6
IW0222962; 1}

of a claim to a
performance
of

A.

B1OTECHNOLOGY

COMPANIES

RELY

HEAVILY

ON PROPRIETARY

PROCESSES
Every biotechnology
technology,

allocates a significant

including capital expenditures

tooled because
chemical

company

they are specifically

processes.

Establishment

part of its investments

in brick-and-mortar

designed to practice

facilities that cannot be re-

very particular biological

licenses,

necessary

facilities,

depend on process

production

biological

can be critical to meeting the required

to maintaining

a granted

Biologics

large upfront investments

has to "commit"
and without

which

Such
advantage

process

on innovative
the company's

{W0222962; 1}

product specifications

a biotechnology

from which

Specific

Given

and

such

company

often

it cannot afterwards deviate,

it could not remain in business.

technology

more than one of a company's

their most valuable

technology

integrity.

before the FDA.

and regulatory requirements,

over its competitors

biotechnology

License Application

to a certain process

or

for the operation of cost-intensive

pilot plants or full-scale

steps process

in process

business

companies
platform

can give a manufacturing

- and because
products,

assets.

process

companies

technologies

technology

a product

may be widely

only source of revenue.

company

a critical

is often applicable

often count process

And even for smaller,

that do not yet produce

biotech

patents

to

among

development-stage
of their own, process

licensed in the industry

patents

and constitute

Method
biologic

patents

also play an important

drug products.

and improved
patented.

Large ongoing

methods

of delivering

Major clinical

way to protect

Different

are contracted

direction-or-control

laboratory

out.

with treatment
professionals,

members,

methods

without

separate

entity.

{W0222962;

1}

new indications

patents

dollars,

and have

are often the only feasible

adding

subsets

patents are often capable

involves

selection

physicians,
without

of treatment
providers

to procure

and patients

for example,
claims

likewise

which may not be in a

of biological

Importantly,

component.

in medical
assays in

no major clinical

Indeed,

population

of being practiced

sector

of
trial

in the experience

claims to biomarker-assisted

that are capable

by

can

steps that require the participation

drugs in the oncology

of their intent-to-treat

processes,

The use ofbiomarkers

and patients.

a biomarker

of being practiced

or drug delivery

the application

or therapy

claim limitations

biological

manufacturing

with each other.

it is often difficult

For example,
in specific

Method

of healthcare

inherently

today is being conducted

BIO's

Method

method

relationship

in particular,

combination

are made in studying

cost well over 100 million

steps of patented

may require the participation

therapy,

drug and

these investments.

entities.

and routinely

individual

such drugs, long after the drug itself has been

in some cases.

The steps of biotechnology

separate

investments

trials commonly

been as high as 800 million

role in protecting

are commonly

of

treatment
by a

being studied

long after they were first approved

for marketing.
gene predicts

Such studies
treatment

the targeted

success

treatment

drug, the avoidance

of side-effects,

Because

treatment

claim drafted

performed

by separate

vulnerable

to circumvention

of biofuels

likely to benefit

of other patients

and bioplastics.

process

methods

valuable

a biomarker-assisted

as inherently

anticipated.

may be necessary

having

The addition

be allowed

are typically
would

also be

single entity rule.

process

patents

The innovative
and hybridization,

field.

In

play very similar

use of biomarkers
for example,

single entity rule invites would-be

subset of biotechnology

for separate

practice,

of

to confer patentability

roles in

for marker-

is likewise

patents.

to this Court's

a particularly

from the

to alternative

is not limited to the biomedical

biotechnology,

allows

of the drug to a patient

the only claim that would

under this Court's

of a specific

This finding

assays and drug administration

in plant breeding

Rigid adherence

{ W0222962; 1}

allocation

of such patents

to protect without

steps of patented

who are particularly

be rejected

laboratory

and environmental

assisted trait selection

circumvent

probably

entities,

The importance

difficult

population.

the "administration

assay step for treatment

the production

in the patient

and redirection

to comprise

on the claim. But because

agricultural

that a polymorphism

the drug was in public use prior to this finding,

X" would

a biological

for example,

or failure

of those patients

therapies.

polymorphism

may reveal,

and avoiding

infringers

patents by "dividing
the kinds of formal

to

up" the
legal

relationships

that were only recently

infringement

liability.

B. THE SINGLE
FOR DIVIDED

established

ENTITY

RULE

INFRINGEMENT

1. THE TEXT
ENTITY RULE

OF THE

SHOULD

NOT

DOES

NOT

liability to exist.

authority

uses, offers to sell, or sells any patented

of the patent
multiple

therefor,

infringes

actors in common

under the United

Given the context

Congress

intended

otherwise

- words

the meaning

importing

without

... during

The use of the word "whoever"

dictionary

to be limited to the singular.

part, reads as follows

(emphasis

of any Act of Congress,

the singular

include

10
1}

includes
and

be understood

unless

no reason

to

to infer that

For example,

in 35

added):
the context

and apply to several persons,

words "person" and "whoever" include corporations,

companies,
associations,
partnerships,
societies, and joint stock companies, as well as individuals;
[...]

{W0222962;

the term

definitions,

that words will generally

of its use in 35 USC 271, there is simply

2 1 USC 1 1 in pertinent

A SINGLE

1 1.2

the term "whoever"

In determining

invention

under contemporaneous

States Code which instructs

include their plural form. 1 USC

REQUIRE

In fact, Section 271 (a) states "Whoever

the patent."

usage,

BE THE STANDARD

a single actor perform all steps of a method claim

for infringement
makes,

to

CLAIMS

STATUTE

The Patent Act does not require

by this Court as a predicate

indicates
[...] the
firms,

USC 101,161, and 171 which use the term "whoever" in reference to inventors, it is
well-established that the individual inventor need not have conceived every element
the claimed
multiple

individuals

invention,
whole.

invention.

calling

To the contrary,
who each contribute

each an inventor,

If "whoever"

would need to be resolved

individuals

in Section

by limiting

its meaning

ambiguous

219 F.3d 930, 939 (gth Cir. 2000); Alpine

DeGeorge

of 271(a),

USC 1; Barrv.

United

States,

United States v. Nam

invention

Dist. of

Glass, Inc. v. Ill. Farmers

i.e., the statute clearly

Ins. Co.,

Van Hoang,

[...] infringes

the patent."

1896).

Because

636

There is only

states that "whoever

makes,

35 USC

it was well established

324 U.S. 83, 91 (U.S. 1945); United

11
I}

the

that

form also include the plural form and vice versa.

C R. Co., 164 U.S. 526, 541 (U.S.

{W0222962;

the

less than its ordinary

At the time the Patent Act was enacted,

the singular

an ambiguity

v. FEC, 333 F.3d 168 (D.C. Cir. 2003).

uses, offers to sell, or sells any patented

that words indicating

interest

v. United States Dist. Ct. for the Central

12237 (8th Cir. 2011);

F.3d 677 (5th Cir. 2011); AFL-CIO

added.

ownership

when its text is open to more than one

California,

271(a), emphasis

in a single

who join in an act of invention,

to something

interpretation.

interpretation

that are combined

271 (a) represent

reasonable

one reasonable

for the efforts of

who join in an act of infringement.

is considered

2011 U.S. App. LEXIS

accounts

and giving each an undivided

Nor does the use of"whoever"

A statute

steps or elements

can denote multiple

same must be true of individuals

meaning.

patent law properly

of

States v. Oregon

the statute is plain and unambiguous,

&

it must be interpreted
Lifelns.

based on its plain and ordinary

meaning.

Hardt

v. Reliance

Std.

Co., 130 S. Ct. 2149, 2156 (U.S. 2010).

The common
statute,

law of various

"whoever"

Sample,

can refer to either the singular

215 Wis.2d

the meaning
ordinary

states likewise

487, (1998),

the Supreme

of the word "whoever"

meaning

of the word

more than one person",

the issue in Mahood

id. at 490.

to one or more persons,

or plural.

Court of Wisconsin

can encompass

Additionally,

where

and denotes

the Ohio Court of Appeals

as well as singular,

THE LAW
ENACTED

WITH

precedent,

use in the established

e.g. Merck
Section

TO A SINGLE

TRADITIONAL

enacts a statute,

and to intend the meaning

relevant

& Co. v. Reynolds,

271, "which

defines

1}

ENTITY

LIABILITY

AT THE TIME

it is presumed

body of law, unless

PRINCIPLES

SECTION

271(a)

to be aware of relevant

it clearly

1929).

IS
AND
WAS

judicial

with their history

indicates

130 S. Ct. 1784, 1795-6 (2010).

'infringement,'

County

STANDARD

of its words to be consistent

otherwise.

and

See,

Here, the enactment

left intact the entire body of case law on

12

{W0222962;

is

person who," and refers to one or more persons."

OF INFRINGEMENT

When Congress

referring

and that "whoever"

33 Ohio App. 292, 297 (Ohio Ct. App., Summit

INCONSISTENT

or

addressed

is a pronoun

Mahood

ADHERENCE

and

either a single individual

meaning

2. STRICT

v.

held, in interpreting

also such a pronoun,

v. Caldwell,

in State

that "the common

it held "the word "who"

plural

"every

that, when used in a

For example,

as used in a state statute,

"whoever"

v. Caldwell,

has recognized

of

direct infringement."
the second

Aro, 365 U.S., at 342.

half of the 19 _ century, 3 that the determination

informed

by well-established

common-law

common

sense and the patent

law's purpose

allowed

to divide up the practice

patentee's

combine

enforcement
violated.

to infringe

liability

of tort and property,

invention

is

and that both

if joint actors were

in circumvention

a patent.

with imposing

of the

where

multiple

of 271 (a) is to provide

whose validly

it is contrary

granted

to the Constitutional

an

rights

are

mandate

in cases where joint actors unite to circumvent

language,

and the objects and policy

for multiple

should "look to the statutory

Section

904, n.2 (1890)

Orlando

F. Bump,

actors.

language,

of the statute

3 See, e.g., William

In analyzing

and the objects

will execute

C. Robinson,

to

the patent

The Law of Patents,

of 271 (a), are all consistent

and applying

and policy

Congress'

a statute

courts

of the law, so that the

true intent".

Park

'n Fly v.

The Law of Patents for Useful Inventions,

([A] partial use to be completed

ed. 1884) ("Parties who are acting

constitutes the alleged infringement

Trade-Marks,

by others

Labels

is an infringement.");

and Copyrights

in concert in the use of the machine which

of the complainant's
rights may be joined

defendant.").
13
1}

liability

right".

liability

construction

The objective

perspective,

patent protection

The statutory

with imposing

for those patent owners

From a policy

owners "exclusive

{W0222962;

of infringement

would be defeated

of a patented

of 271 (a) is consistent

mechanism

eviscerate

Court's

principles

since at least

fights.

The purpose
parties

That body of law recognized,

378 (2dnd
as parties

Dollar

Park & Fly, 469 U.S.

U.S. 527, 536 (U.S.

Train v. Colorado
context

1980);

Public

189, 213 (U.S. 1985).

See also, Staffordv.

United States v. Culbert,

435 U.S. 371,374,

Interest

Research

of its use in 35 USC 271(a),

and the policy and objectives

their fights.
a gaping

intent of providing

Or, in other words,

legal loophole,

could coordinate

which

their conduct

there is no statutory

is singular

patentees

it seems unlikely

a remedy

basis for limiting

of

in 1952 intended

to open

process

the scope of infringement

liability "[f]or infringement

all of the claimed

steps of the process

must be performed."
Whether

entirely by one single actor, or incrementally

infringement

should not turn on a strained

To hold otherwise
patentability,

Congress

In instances

by separate

271 (a) intending

1}

invention,

- a finding

of direct

of the term "whoever."

where Congress

wishes

entities.

to implicitly

because

of

it includes

BIO does not believe

create a right without

steps

that
a remedy.

to leave the holder of a valid and infringed

14

{W0222962;

of a process

claim was practiced

entities

issued, but be left unenforceable

of being practiced

crafted section

Thus,

would mean that a claim can meet every requirement

and be validly

that are capable

definition

claims.

actors

EMI Grp. N. Am., lnc. v. lntel

a process

by separate

independent

under 35 USC 271 (a)

Rather, to establish

157 F.3d 887, 896 (Fed. Cir. 1998).

there is

for the infringement

to a single entity.

Corp.,

of the statute,

exist, under which

to avoid liability for infringing

Given the

if giving it that meaning

that Congress

did not theretofore

444

n. 4 (1978);

Group, 426 U.S. 1, 9-10 (1976).

simply no reason to infer that the term "whoever"

would defy Congress's

Briggs,

patent

wholly

remediless,

(unavailability

it can be trusted

of remedies

noted by Judge Newman

infringement,

whether

whether

entity

as a predicate
rule"

claim

is present

liability

rule",

should

then

PRINCIPLES

The

Supreme

and principles

("As the exclusive

infringement

practicing

method.

1}

practitioners).

As

on any theory

be determined

in the accused

the steps.

liability,

of a showing
Once

by

process,

The Court's

reliance

on

each step of a method

is misplaced.
that every

infringement

The "single
element

has been

of the

established,

be determined.

LAW

SHOULD

INFORM

THE

TEST

FOR

LIABILITY

Infringement

Court

has explained

Co. v. Minnesota
right

conferred

was a tortious

taking

that patent
to resolving

Moline

Plow

by the patent

infringement
issues

is a tortious

of patent

was property,

act

infringement.

Co., 235 U.S. 641,648

of a part of that property,

15

{W0222962;

should

entity must practice

or indirect

of tort law are relevant

Mfg.

by medical

is infringed

are practiced

in favor

INFRINGEMENT
Direct

Dowagiac

be abandoned

OF TORT

1.

claim

a single

any direct

activities

right."

of entities

in the accused

should

DIVIDED

patent

where

See 35 U.S.C 287(c)

"a patent that cannot be enforced

of the claim

to finding

entity

C.

in McKesson,

of the number

the "single

infringing

or not a method

all of the steps

regardless

for certain

is not a statutory

Thus,

to say so explicitly.

(1915)

and the
the normal

measure

of

of damages
must

was the value

not be ignored.

created

("[W]hile

and defined

for patent

infringement

The Supreme
informed

divided

Court

by the parallel

Convertible

("Patent

in tort ....

has recognized

464 U.S. 417, 435 (1984)

In BIO's Opinion,

in which

liability.

Machine

1344,

rights,

and a

Co. v. lngram

infringement

is

Determining

liability

case, becomes

in a
a

it is just to hold one individual

copyright

the law of joint infringement

in On Demand

is

Aro Mfg. Co. v.

Sony Corp. Am. v. Universal

indirect

infringement

").

Co., 377 U.S. 476 (1964).

(discussing

&patent

rights are statutory

of joint tortfeasor

of another."

1576,

LP, 474 F.3d

that the law of joint patent

the circumstances

however,

Inc., 35 F.3d

for patent

case, just like in an indirect infringement

for the actions

jury instruction

Sales,

Co. LP v. Grant Prideco

J., dissenting)

the regimes

"of identifying

accountable

Hydril

statute,

to speak loosely

the cause of action

sounds

Top Replacement

infringement

question

it may be appropriate

by statute.");
(Mayer,

The patent

Corp. v. Am. Vending

as a tort, more accurately

1355 (Fed. Cir. 2007)

claim

was taken.").

N. Am. Phillips

1579 (Fed. Cir. 1994)

infringement

of what

City Studios,

Inc.,

infringement).

was correctly
Industries,

characterized

in a

Inc., 442 F.3d

1331

(Fed. Cir. 2006) as follows:

It is not necessary for the acts that constitute infringement to be performed by one
person or entity. When infringement
results from the participation
and combined
action(s) of more than one person or entity, they are all joint infringers and jointly
liable for patent infringement.
Infringement
of a patented process or method cannot
16
{W0222962;

1}

 be avoided by having another perform one step of the process or method. Where
the infringement
is the result of the participation and combined action(s) of one or
more persons

or entities,

they are joint infringers

and are jointly

liable for the

infringement.
442 F.3d at 1344-45.

The On Demand
at 1345.

Indeed,

BIO believes

body of caselaw
embodied

court found "no flaw in this instruction

that this instruction

4 and generally

in Section

applicable

accurately

legal principles

reflects

271 (a), under which liability for patent infringement,

rule disregards
secondarily
where

performed

the diversity

instrumentalities,

of circumstances

the conduct

instructions,

agency,

common

4 See, e.g. Shields

"When

Stringent

infringement

of another,

party even if

of this Court's

single entity

liability,

where parties

aids and abets another's

or

act in concert,

conduct,

provides

and encouragement,

or where there is a joint enterprise,

scheme

action.

v. Halliburton

results

as for other

to the accused

application

to be

under which parties may be jointly

liable, such as where there is vicarious

one party causes

partnership,

by others.

of law." Id.

the long-standing

that are presumed

torts, can often be found for acts that can fairly be attributed
they were literally

as a statement

or concerted

stringent

Co., 493 F. Supp. 1376, 1389 (W.D.

from the participation

parties, they are all joint infringers

New Jersey Patent Co v. Schaeffer,

This Court's

and combined

action

La. 1980)(

of several

and jointly liable for patent infringement.")(citing

159 F. 171 (E.D. Pa., 1908)).; ld. ("Infringement

of

a patented process or method cannot be avoided by having another perform one step of
the process or method.")(citing
Metal Film Co. v. Milton Corp., 316 F. Supp. 96
(S.D.N.Y. 1970)); E.1. DuPont De Nemours and Co. v. Monsanto Co., 903 F. Supp. 680,
735 (D. Del. 1995)( ("[A] party cannot
someone

else perform

avoid liability

one or more steps of a patented

17

{W0222962;

1)

for infringement
process

by having

for them.").

"control

or direction"

test captures

conduct

that is subject to flexible

and fact-intensive

law - yet, there is no indication

more limited test for patents

To the contrary
enactment,

but flexible

are tortiously

tortfeasor

at 18-30;

Moline

BIO

by a patent was deemed

a unique

and much

with by multiple

species

of property

the applicable

liability

extensively
McKesson,

believes

to be a property

as a tort and be compensable

that apply, for example,

of the law, all of which

banc questions.

sought to establish

that, at the time of the Patent Act's

briefed

Br. for Appellant

exposition

in torts and other areas of the

Plow Co., 235 U.S. 641,648

inquiries

the particular

The appellants
secondary

right conferred

taken or interfered

merely because

inquiry

(1915).

happens

common

that liability

Accordingly,

law theories

of joint

Br. for Appellant

the disposition

for direct patent

infringement

largely

on the nature

of the actions performed,

position

liable for the infringement.

1}

in "divided"

en

should
of the actors,

to hold one or more of the

No one test for liability

18

{W0222962;

the relative

able

of one actor

method

actors

Akamai,

of this Court's

but not all, of the steps of a patented

it is fair, under the circumstances,

and

with Appellants'

one or more,

and on whether

the

should not be precluded

BIO agrees

inform

Dowagiac

to be a patent right.

and in detail.

should

right,

when other forms of property

wrongdoers

at 19-37.

as such.

who performed
depend

of

alone.

could be viewed

Mfg. Co. v. Minnesota

demanding

that Congress

- it is well-recognized

the exclusive

Whose infringement

only a very limited piece of the wide spectrum

infringement

situations

would

envisioned.

seem to cover all the factual

Certainly,

to always

or mastermind

party would,

from another's

invention

As explained
claimed

above,

method

question

among

the actors.

beneficiary

benefiting

may require

to profit

of direct infringement.

be found to be infringed

if all of the steps of the

entities

in combination.

portion

The

of the

or apportioning

liability

commercial

may be the party liable for the patent

that liability be shared among

damages.

In

two or more actors

infringement

tortfeasor

in the context

of negligent

or breach

The applicability

it should
liability

of these

For example,

be noted
appear

or intentional

of duty that renders

clear that it applies

principles
Section

developed,

often requiring

the accused
to strict

that the common

to have

torts,

party's

liability

to intentional

and negligent

a culpable
tortious

torts appears
(Second)
torts,

law theories

of

for the most part,

conduct

876 of the Restatement

19
1}

parties

activity.

and secondary

{w0222962;

a charge

the actor who was the dominant

activity

observation

making

risking

or a controlling

culpable

and who is liable for which

In many cases,

from the infringing

understood.

should

remedy,

As a general

mind

themselves

relationship,
permit

can be dealt with by fairly assigning

fairness

Indirect

a formal agency

by one entity or by multiple

of the infringing

other instances,

joint

the patent

are performed

damages,

that can be

in too many circumstances,

without

of the appropriate

patentee's

require

scenarios

state of
in itself.

to be less well
of Torts,

explicitly

while

declines

to

take a position
in situations
(Second)

that involve
of Torts,

Direct
Section

on whether

strict

patent

encouraging

tortious

liability

conduct,

is true for secondary

conduct

of another.

the common

tortfeasor

liability

and who

tortfeasor

law seems

on actors

who

did not breach

5 See Restatement

tortious

to Section

action

apply

876, Restatement

liability

offense.

of intent

to infringe,

or any other

requires
liability

Liability

particular

for concerted

normally

6 As Sections

illustrate,

harm,

a showing

of the patent,

tortfeasor

See caveat

is a strict

271 (a) does not require

joint

for concerted

thereto.

infringement

comparison,

principles

liability.

and comment

of due care, knowledge

same

its liability

action,
a robust

for directing

recklessness,

had no knowledge

or for assisting
showing

imposing

of Torts,

876, comment

Section

or

the

(Second)
joint

of an unreasonable

duty of due care.

In

of fault, 5 and the

or permitting

a non-delegable

(Second)

lack

state of mind.

876 and 877 of the Restatement

to be uncomfortable

under

or secondary
risk of

(b.) ("The mere

common plan, design, or even express agreement is not enough for liability in itself, and
there must be acts of a tortious character in carrying it into execution.");
comment
(c.)("In order for the rule stated in Clause
conduct of the actor be in itselftortious.").
6 See Restatement

(Second)

(a) to be applicable,

of Torts,

Section

877, Clause

it is essential

(a)("[For

that the

harm

resulting to a third person from the tortious conduct of another, one is subject to liability
if he] orders or induces the conduct, if he knows or should know of circumstances
that
would make the conduct tortious if it were his own."); see also id, comment (b.)("The
liability stated [in Clauses b, c, and d] exists only if the resulting harm is within the risk
created

by the defendant's

negligent

conduct
20

{W0222962;

I}

in acting

or in failing

to control.").

Patent
mind

law, on the other

is not, nor should

In the first instance,

insofar
would

hand,

has no such qualms,

it be, a precondition

common-law

as they require

theories

a culpable

thus seem to provide

of finding

direct

of secondary

state of mind

an uneasy

and a culpable

state of

infringement

or joint

liability.

tortfeasor

as a precondition

liability,

for liability,

fit with the no-fault

offense

of direct

or contributory

infringement,

patent

infringement.

Patent
hand,

law liability

provides

aiding

an easier

and abetting

tortious

because

would

make

the indirect

another's

patent

Indeed,

contributory

patent
them,

at least some

a patented

1. A actively

tortious

a useful
questions

assume

conduct

Rest.

because

or contributes
of liability

as well as the general

three

(direct)

"induced

B's practice

infringement

steps;

that

(2d), 877(a),
or is at

for inducement

infringement"

of all method

is itself

to the infringement

"least-common-denominator"
about joint

or

he knows,

common-law

method:

induces

for inducing

if it were his own,"

that principles

on the other

of"circumstances

is itself"tortious"

21
{W0222962; 1}

knowledge

that he induces

infringement,

theories

Just like the tort inducer's

conduct

BIO believes

By way of example,
involving

conduct

knowing,

provide

liability

or constructive

infringer's
with

common-law

tort.

he has actual

of a patent.

resolving

fit with

the [induced]

least chargeable

underlying

for inducement

and

principles

approach
as well.

scenarios

to

2. A actively
remaining

step;

3. A actively
remaining

All three
Assuming

there

a single

primary

inducer,

with

the practice

infringer,

there

specific

about

this Court's

control"

showing
relationship.

would

simply

all requirements

that the relevant

Neither

Global

I}

liability

chose

incorporates

to reserve

Under

each

claim

showing

every

directed

step, knowing,

if the

step of the

conduct

with

or being

and its infringement.

in contrast,

one claim

party.

in purposeful,

of every

of the patent

instead

featuring

can be met: The predicate

method

engages

conduct.

to deny

it to a third

claim

step itself-

actors

a party
of Global
unless

are additionally

could

unambiguously

Tech, and still evade

the patentee

can make

in a "direction

Tech nor the text of section

22
{W0222962;

of the

the

first scenario

be no reason

or relegate

jurisprudence,

practicing

the typical

and state of mind,

the practice

meeting

type of culpable

under

if the accused

lies if the inducer

with knowledge,

demanding

liability

intent

is made

in such conduct,

the same

of an inducement

to bring

by simply

involve

step to itself,

element

and liability

liability

and practices

inducement

infringement

engage

of all but one step,

exists

of direct

Under

B's practice

really

of a claim

chargeable

and C's practice

or

induces

the same

intent

of all but one step,

scenarios

every

specific

B's practice

step himself.

scenario,

claim;

induces

or

271 (b) requires

any such specific formal legal relationship. 7 To superimpose a "single entity rule"
and a strict "direction

or control" test would preclude liability

where it must clearly

exist under the Supreme Court standard for inducement.

This Court's single entity rule stands in similar tension with established
contributory

infringement

principles. As is the case for inducement under section

271 (b), "it is settled that if there is no direct infringement

no contributory
365 U.S.336,

infringement."
341 (1961).

of the patented
Jenkinson
in Supreme
infringement
knowingly

And

invention

Co., lnc.

Aro Mfg.
direct

is present

v. Hilton

Davis

Court jurisprudence

contribute

sidestep

liability

conduct

of multiple

exists

in the accused

product

Chem.

The required

Top Replacement
if each claimed
or process.

entity,

happens
elements

element

Nothing

act of direct

and that those

could

Co.,

Warner-

17, 40, (1997).

that the predicate

of a patent

such infringement

actors.

Co., 520 U.S.

by a single

to the infringement

where

Co. v. Convertible

infringement

indicates

can only be undertaken

of a patent there can be

relatively

who
easily

to involve

the combined

of a claim

for contributory

7 Moreover, to permit inducement

liability where the accused party is a primary
participant would be consistent with the common pre-1952 policy underlying both 271 (b)
and (c). Section 271 (c) permits, under defined circumstances,
liability for those who
contribute to the infringement
of a claim by providing a "material or apparatus for use in
practicing

a patented

process".

It would defy logic to impose

contributory

liability

on

one who knowingly contributes a material for practicing a patented process, but to
foreclose liability for the much more direct act of knowingly "contributing"
a step to the
practice

of the same process.

23

{W0222962;

1}

infringement
include

are as well-established

a single

entity

as they are demanding,

accused

liability

focuses

contributory

- yet one could

infringers

be liable

could

culpability,

and that is nowhere

of liability

infringement,

downstream

do, know,

would

actors,

to be found

the inquiry

party's

conduct

and intend

and the other not, simply

to unrelated

infringement

patent

on the accused

that applies

avoidance

do not

rule.

As is the case for induced

infringement

and they

be inconsistent

and culpability.
exactly

because

with the reason

Two

the same

of a single

that has nothing

in the statute.

for contributory

entity

things
rule

to do with the party's

Such

arbitrary

for the contributory

doctrine:

It exists to protect patent rights from subversion by those who, without

infringing the patent themselves,
engage in acts designed to facilitate
infringement
by others.
[...] where enforcement

directly

This protection is of particular importance

in situations
against direct infringers would be difficult, and where

the technicalities
of patent law make it relatively easy to profit from another's
invention without risking a charge of direct infringement.
Dawson Chemical
v. Rohm andHaas

Co., 448 U.S. 176, 180 (1980)

In the contributory
implicitly,
(1983)

infringement

rejected

a single

the accused

infringer

entity

performed

"Because

or other light sensitive

layer and because

Advance

cannot

context,

steps

the claims

In Fromson,
of a patented

include

Advance's

has correctly,

method

the application
customers,

albeit

720 F. 2d 1565,
but left the final

of a diazo coating

not Advance,

be liable for direct infringement

24

{W0222962; 1}

this Court

requirement.

step to its customers.

the diazo coating,

Co.

applied

with respect

to

those plates
added).

but eouM be liable for contributory

Importantly,

and its customers,

because
liability

on any single actor's

not have reached

the method

consistent

liability

for induced

by itself practicing

this Court's

infringer

could not have been premised

The Fromson

with the general

court could

simply

rule that direct infringement

by a single entity - Fromson

infringement,

that a contributory

steps of the patented

In light of the foregoing,

the accused

under a single entity rule.

must occur, albeit not necessarily

explained

Id, at 1568 (emphasis

between

infringement

for direct infringement.

this conclusion

Not only is Fromson

above

was practiced

for contributory

liability

infringement."

BIO provides

also illustrates,
infringer

as was

cannot

escape

method.

the following

answer to the first question

in

en banc order in McKesson:

1. If separate entities each perform separate steps of a method claim, under what
circumstances,
if any, would either entity or any third party be liable for
inducing

infringement

Advance

Offset Plate,

Consistent
liability
parties

be found

or together

Tech Appliances,
infringement.
unrelated

when

for

contributory

Court's

the inducer

recent

with the inducer

parties,

the accused

practice

all patent

to directly

inducer

1}

See

Tech decision,

induces
infringe

This standard

Fromson

inducement

one or more third

a patent

claim.

does not require

must intend that one or more,

claim elements.
25

{W0222962;

Global

knowingly

inc. v. SEB S.A. (2011.)

Instead,

infringement?

lnc., 720 F.2d 1565 (Fed. Cir. 1983).

with the Supreme

should
alone

or

The accused

party's

Global-

single

actor

even
knowledge

v.

that the claim is being practiced

consistently

can be inferred from circumstantial

profiting from a third party's

action between parties; communications

action; joint, coordinated,

evidencing

parties to perform specific steps; providing

participation

in the practice

such as:

or sequential

a common scheme; inviting third

instructions;

the accused party's

active

of the claim steps; and the like.

The mental state required

for inducing infringement

a specific intent by the defendant

addition, that the defendant

evidence,

under 35 U.S.C. 271 (b) is

to induce the acts that constitute

knew (or is chargeable

infringement

with knowing)

and in

that the induced

conduct would be infringing. 8

This standard operates

not only in the typical situation where the accused

inducer does not itself participate

equally applicable
infringement.

to instances

For example,

in the practice of the infringing

that might otherwise be characterized

assume a hypothetical

of a patented process, provides

method, but is

instructions

party that practices

as joint (direct)
multiple steps

to another party on how to complete

process, and sells the resulting product jointly with the other party pursuant
marketing

agreement.

the

to a co-

Such a party could fairly be held liable as an inducer of

8In comparison, the mental state required for liability for contributory
infringement under 271 (c) is the defendant's knowledge that "the combination for
which his component was especially designed was both patented and infringing." See
Aro Mfg. Co. v. Convertible Top Replacement Co., 377 U.S. 476, 488 (1964).
26
{w0222962;

1}

infringement

if its transactions

constructive
process

knowledge

be completed

a direct (joint)
or control"

with the other party were undertaken

of the patent,
by the other.

infringer

relationship

liability

different

but equally

relationship

between

the actors.

In instances
control

of infringement,

relationship,

fully consistent
the accused
accused

software

The combined,

but not vicariously

I}

showing

of existing

unfair

programs,

neither

standing

and Softtech,

engaged

on a

or equivalent

principles
liability

outcomes

where

legal

or
can be
on what
the

liable.

integrated

package

of fault, while

fairly premises

and avoids

or both - the

and dependent

inducement

as

actions.

are not in a direction

Hour two parties

integrated

showing

of an agency

in Golden

of which,

implemented

the functions
alone,

of their

infringed

all steps of the claim.

in joint sales activities,

27
{W0222962;

liability),

Such application

and intended,

for the other's

a robust

in an infringement

application

with Global-Tech.

For example,

emsCharts

the logical

is culpable

(strict

be viewed

to a "direction

a joint direct infringer,

requires

demanding

participants

party did, knew,

party

respective

where

liability

is "fault-free"

completely

could

with the other party amounts

liability

or

intent that the patented

the same party

that gives rise to vicarious

being that inducement

joint infringement

Or, conversely,

if its relationship

Thus, a party can be an inducer

difference

and with the specific

with actual

co-promoted

the patent.
The two parties,

each other's

products

for bundled

sales, coordinated

joint promotional

and information

Despite

evidence

abundant

district

party,

controlled

prompting

events,

the [other]

Softtech.

party,

for the [other]

party's

sufficient

[to find control

or direction].

emsCharts,

Inc. 583 F.Supp.2d

enabled

two programs
extended

is legally

information

the two parties,

sufficient

their two programs

(emphasis

that the defendants

to work together,

to the [other]

infringement

or

is not

Hour Data Systems,

(S.D.Tex.2008))

the

to show

or facilitating

Inc. v.

(Slip Op.), at 4, (E.D. Tex. 2009).

811,839

held

to those effects.

available

party,

in the alleged

"' Golden

On appeal, this Court acknowledged

partnership,

between

the [other]

involvement

Inc., 2009 WL 943273

v. Lipidlabs,

'Making

instructing

arranging

however,

to RFPs,

contract

and cooperation

of this evidence,

or directed

in response

and had an ongoing

of coordination

court held that "[n]one

emsCharts

for joint bidding

(citing

Emtel,

Inc.

added).

"formed

a strategic

and collaborated

to sell the

as a unit." 614 F.3d 1367, at 1371. Yet, this Court saw "no need for

discussion

noninfringement

of this issue"

as to the process

and affirmed

the district

court's

grant of JMOL

claims the jury had found to be jointly

of

infringed.

Id.,

at 1381.

"Providing
"arranging
enough
BIO's

information,"

for the other party's

to establish

direction

view, such evidence

"prompting,"
involvement
or control

should

1}

in the alleged

under this Court's

"facilitating"
infringement"

and
may not be

current jurisprudence

surely go a long way in establishing

28

{W0222962;

"instructing,"

- but in

the accused

party's

liability

is simply

even under the demanding

no reason

willfulness,

and that are harmed

be foreclosed

BIO submits

actors should be neither

inducement

or contributory

method

must be infringing,

showing

for an inducement

consistent

with Global

single or by multiple
Because

Tech and Aro II. There

that face conduct

suggesting

high culpability

by undeniably

infringing

that a "control

or direction"

a precondition

for, nor a required

infringement.

conduct,

products,

relationship

The only precondition

or contributory

or even
should

infringement

between

element

entities,

or with or without

is that the accused

rule.

The required

claim can then be made, fully

the participation

or contributory

the

of, a claim for

Tech and Aro II, where the steps of the claim are practiced

knowledge,

actors is not directly

infringement

of the accused

by a
party.

turns on the accused

and intent, the formal legal relationship

between

the primary

relevant. 9

The foregoing

is BIO's

minimum

proposed

disposition

Court wants to go no further,

and declines

to expand

infringement

the existing

direction

liability,

competing

i.e. it must meet the "all elements"

liability for inducement

party's

of Global

from all relief.

Accordingly,
primary

why patentees

standards

liability

at a minimum

beyond

it should

uncouple

liability

of these cases - if this

the standard
or control

for joint(direct)

test requiring

for direct infringement

vicarious
from liability

9A party's choices of entering into legal relationships

with other actors, and of
structuring such relationships
in certain ways, may of course be relevant to a showing of
knowledge

or intent.
29

{W0222962;

1}

for indirect
elements

infringement

To first demand

of direct infringement,

infringement
impossible

would

amount

liability

reasons,

for ongoing

or contributory

of control

showing

or contributory

for the predicate

for inducement
making

respectfully

infringement
infringement

requests

this Court

cases and apply existing

Washington,

Avenue

Biotechnology

lndustry

S.W., Suite 900

DC 20024

Date: July 5,2011

30
{W0222962;

I}

it all but

to abandon
common

disputes.
submitted,

OF COUNSEL

1201 Maryland

and

claim.

John W. Ryan
Thomas M. Haas
Sullivan & Worcester LLP
1666 K Street, NW
Washington,
DC 20006

Curiae

rests

CONCLUSION

Respectfully

Hans Sauer, Ph.D.

Attorney for Amicus

if the all

infringement

or direction

one tough test onto another,

inducement

BIO

entity rule" for divided

analysis

a showing

to "stacking"

to bring a successful

For the above

for inducement

and then a demanding

IV.

"single

clear that a claim is directly infringed

rule is met, and that liability

on its own grounds.

finding

and make

Organization

the
law tort

CERTIFICATE
I hereby

certify

that on this

5 th

OF FILING

AND SERVICE

day of July, 2011, the Brief of Amicus

Curiae

of

Biotechnology
Industry Organization
was transmitted
by Federal Express
Overnight Delivery (for delivery on July 6, 2011) to the following:

Donald

R. Dunner

Robert

S. Frank,

Jr.

Finnegan, Henderson,
Farabow
901 New York Ave., N.W.

Choate, Hall & Stewart LLP

Two International
Place

Washington,

Boston,

DC 20001-4413

MA 02110

Counsel for Plaintiff-Appellant

Counsel for Plaintiff-Appellant

Akamai

The Massachusetts

Technologies,

lnc.

Steven

Robert G. Krupka
Kirkland & Ellis LLP
333 S. Hope
Los Angeles,

Westlake

Counsel for Defendant-Cross

Limelight Networks, lnc.

San Francisco,

Appellant

LLP
Center
94111

Austin,

of America

Jeffrey E. Francis
Pierce Atwood LLP
100 Summer
Boston, MA

Street,
02110

Counsel for Boston

Association

{W0222939;

1}

Village,

CA 91362

G. Barber

TX 78701

Counsel for Amicus

Curiae

American Intellectual
Association

Property

Raymond P. Niro
Niro, Scavone, Hailer
Suite 2250

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Chicago,

Patent

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Pirkey Barber LLP

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Counsel for Amicus Curiae

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Research and
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Counsel for Amicus Curiae

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CA

of Technology

SoCal IP Law Group LLP

310 North Westlake Boulevard,

St., 29th Floor

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Arnold & Porter,
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Institute

Law

Law

& Niro

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IL 60602

Counsel for Cascades

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120

John C. Janka

Elizabeth

Niro, Scavone, Hailer & Niro

181 West Madison Street, Suite 4600

Finnegan, Henderson,
Farabow
901 New York Avenue, NW

Chicago,

Washington,

IL 60602

Counsel for Cascades

Ventures,

Inc.

1}

DC

20001-4413

Counsel for Akamai

(,I'

{W0222939;

D: Ferrill

Technologies,

John"W.Ryan

lnc.

CERTIFICATE
Amicus
under

type-volume
Brief

Curiae

Rules

Procedure.

OF COMPLIANCE

32(a)(6)(A)

Thus,

words,

limitation

BIO

typeface

the Table

Microsoft

Word 2003,

authorities

and certificates

Industry

that Amicus
provided,

and

was prepared

using

14-point

of Contents

including

Organization

32(a)(7)(B)

certify

therein

Curiae

spaced

excluding

and

I hereby

for Amicus

proportional

Biotechnology

of the

Federal

Curiae

BIO's

I further
with

Times

footnotes,

of

brief complies

certify

Microsoft
New Roman,

excluding

submits

Rules

and Table of Authorities,

that
Word

M. Haas

its brief
Appellate
with the

the foregoing
2003

using

and contains
as determined

the table of contents,

of counsel.

Thomas

{W0222962; 1}

("BIO")

6880
by

table of