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Joint Infringement Liability After Golden Hour Data Sys. v. emsCharts, Inc.

By Heather R. Bobkova
November 23, 2010

A method patent is only infringed when a single actor performs each step of the claimed invention. BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007). In BMC, the Federal Circuit recognized that the single-actor rule seemingly provides a loophole for parties to avoid liability by contracting out one or more claimed steps. Id. at 1379. The court stated, however, that the law would impose vicarious liability on an accused infringer who controls or directs the conduct of the acting party. Id.; see also Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008) (explaining that joint infringement turns on whether the accused infringer sufficiently controls or directs other parties such that it can be said to have performed the steps itself). In BMC, the court further noted that patentees can offset concerns over infringement avoidance through careful claim drafting. Id.

The Federal Circuit recently revisited the issue of joint infringement in Golden Hour Data Sys. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010). The court's decision in that case illustrates one way in which vicarious liability may not close the loophole for liability avoidance through the use of multiple actors. Further, the decision shows that claim drafting alone does not end the joint infringement problem for patentees.

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