District Court Applies Wrong Indirect Infringement Standard: Federal Circuit | Practical Law

District Court Applies Wrong Indirect Infringement Standard: Federal Circuit | Practical Law

In Move, Inc. v. Real Estate Alliance Ltd., the US Court of Appeals for the Federal Circuit found that the district court did not use the correct standard under Akamai Technologies, Inc. v. Limelight Networks, Inc. for determining indirect infringement. It therefore vacated the district court's decision and remanded the case for a determination under Akamai.

District Court Applies Wrong Indirect Infringement Standard: Federal Circuit

Practical Law Legal Update 6-524-7885 (Approx. 3 pages)

District Court Applies Wrong Indirect Infringement Standard: Federal Circuit

by PLC Intellectual Property & Technology
Published on 05 Mar 2013 • USA (National/Federal)
In Move, Inc. v. Real Estate Alliance Ltd., the US Court of Appeals for the Federal Circuit found that the district court did not use the correct standard under Akamai Technologies, Inc. v. Limelight Networks, Inc. for determining indirect infringement. It therefore vacated the district court's decision and remanded the case for a determination under Akamai.
In its March 4, 2013 decision, the US Court of Appeals for the Federal Circuit in Move, Inc. v. Real Estate Alliance, Ltd. vacated the district court's grant of summary judgment of noninfringement to Move, Inc. and remanded the case. The Federal Circuit held that the district court erred in not analyzing inducement of infringement under Section 271(b) of the Patent Act using the standard set out in Akamai Technologies, Inc. v. Limelight Networks, Inc..
The appeal concerned claim 1 of Real Estate Alliance, Ltd.'s patent for a method for locating available real estate with a zoom-enabled map on a computer. In 2009, the Federal Circuit had previously construed the "selecting an area" term in claim 1 to require a user or a computer to choose an area and does not apply when the computer updates certain display variables to reflect a selected area.
On remand, the parties each moved for summary judgment. The district court granted summary judgment of noninfringement to Move and determined that:
  • In Move's system:
    • the user not the computer makes the choice to search in a certain area; and
    • the computer displays the corresponding map.
  • Move was not liable for direct infringement under Section 271(a) of the Patent Act because Move did not exert direction or control over the users who may have performed the selecting steps.
  • Move could not be liable for joint infringement under Section 271(b).
On appeal, the Federal Circuit:
  • Noted that to establish liability for direct infringement under Section 271(a), a patentee must prove that:
    • each and every step of the claimed method was performed; and
    • where more than one party performs the steps of the claimed method, that the alleged infringer controls or directs the performance of each step of the claimed method.
  • Agreed with the district court that there was no direct infringement here because Move does not control or direct the performance of each step of the claimed method.
  • Concluded that the district court erred by not analyzing inducement of infringement under Section 271(b).
Citing Akamai, the Federal Circuit remanded the case so the district court could determine whether Move is liable for indirect infringement under the correct standard, which requires that:
  • The accused inducer:
    • knows of the asserted patent; and
    • performed or knowingly induced the performance of the steps of the claimed method.
  • All of the steps of the claimed method are performed.