Tuesday, March 05, 2013

"Move" wins at CAFC on direct infringement, but Akamai lurks on indirect

From within Move v. REAL on real estate maps.

On appeal, REAL contends that the district court deliberately
disregarded our claim construction order
finding that only a human user performed steps that
constitute “selecting an area having boundaries,” contrary
to our ruling that “both users and computers may select
or choose.” REAL alleges that Move’s systems directly
performed all claimed method steps under our construction,
apart from the actions of any human user. Specifically,
REAL asserts that after a map of a desired
geographic area (e.g., a county) is displayed on one of
Move’s websites according to step (b) of claim 1, the user
clicks on a more defined area (e.g., a neighborhood), and
the Move computer responds by “select[ing] the world
coordinates equal to the boundaries” of that more defined
area (i.e., “selecting a first area having boundaries [such
as a neighborhood] within the geographic area [such as
the county]” according to claimed step (c)).


Move responds that, in construing the selecting steps,
we held that “[s]election takes place when the user or a
computer chooses an area having boundaries,” and Move’s
computer never “chooses.” Appellee Br. 22 (citing Move,
413 F. App’x at 285) (emphasis in original). Move maintains
that there is nothing in REAL’s description of
Move’s system that could lead a reasonable jury to conclude
that Move’s computer selected anything freely after
consideration or made any sort of decision as to what to

The CAFC noted:

In cases in which more than one
entity performs the steps of a claimed method or process,
a party is liable for direct infringement only if that party
exercises “control or direction” over the performance of
each step of the claim, including those that the party does
not itself perform. Golden Hour Data Sys., Inc. v. emsCharts,
Inc., 614 F.3d 1367, 1381 (Fed. Cir. 2010)
(“Where the combined actions of multiple parties are
alleged to infringe process claims, the patent holder must
prove that one party exercised control or direction over
the entire process such that all steps of the process can be
attributed to the controlling party, i.e., the mastermind.”
(internal quotation marks omitted)); see also Muniauction,
Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir.
2008); BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373,
1380 (Fed. Cir. 2007) (“Courts faced with a divided infringement
theory have also generally refused to find
liability where one party did not control or direct each
step of the patented process.”) overruled on other grounds
by Akamai, 692 F.3d at 1306. The determination is a factspecific
inquiry; relevant considerations include whether
the accused direct infringer “provides instructions or
directions” to another entity for performing steps of the
patented process or, on the other hand, “contract[s] out
steps of a patented process to another entity.” BMC, 498
F.3d at 1381.


Thus, on the issue of direct infringement under
§ 271(a), we agree with the district court that there is no
genuine issue of material fact that Move does not control
or direct the performance of each step of the claimed
method. Like the district court, we focus our analysis on
steps (c) and (f) of claim 1. See Remand Order, slip op. at
3. If the performance of those steps is not attributable to
Move, then Move cannot be directly liable for infringing
REAL’s asserted method claim.


We note that, in contrast to REAL’s characterization
of the district court’s analysis, the court explicitly
acknowledged that our claim construction covered systems
in which either a user or a computer performed the
selecting. Id. The court disagreed with REAL’s argument,
as do we, but it did not misapply our claim construction.
Indeed, the court correctly found that the Move
computer does not do the selecting; a user does the selecting,
and then the computer merely updates display variables
to reflect the user’s selection, which we expressly
held did not constitute selection in the previous appeal.
Id. at 5–6; see also Move, 413 F. App’x at 286.


Accordingly, we conclude that the
district court did not err by finding no genuine issue of
material fact that Move is not liable for direct infringement
of claim 1 of the ’989 patent.
However, that does not end our analysis because the
district court’s grant of summary judgment implicitly
rested on its determination that Move also could not be
liable for indirect infringement.


The district court here summarily concluded that because
Move, as a single party, was not liable for direct
infringement, it could not be liable for joint infringement.
Remand Order, slip op. at 6. However, as we explained in
Akamai, our prior cases do not require a single-entity
requirement in the inducement context. Akamai, 692
F.3d at 1315–17. Rather, liability under § 271(b) may
arise when the steps of a method claim are performed by
more than one entity, provided that the other requirements
for inducement are met. See id. at 1306, 1318.
Although properly following our then-existing precedent,
the district court failed to conduct an indirect infringement


We therefore vacate the district court’s grant of summary
judgment and remand for a determination whether
Move is liable for indirect infringement under the standard
set forth in Akamai. That standard requires that the
accused inducer, here, Move, knew of the asserted patent
and performed or knowingly induced the performance of
the steps of the claimed methods, and that all of those
steps were in fact performed.


Post a Comment

<< Home