Divided Infringement Means No Patent Infringement, Says Judge Gilstrap

Claims to a computer system for providing users with location information about an object were not directly infringed where the claims recited a step of user input not under the direction or control of the party requesting and receiving the input.  Accordingly, the court granted a motion for summary judgment of noninfringement of these claims.  PerdiemCo, LLC. v. IndusTrack LLC., No. 2:15-CV-00726-JRG-RSP (E.D. Texas Nov. 8 2016).

The plaintiff had accused the defendant of infringing claims of three patents, including independent claim 18 of U.S. Patent No. 8,223,012. That claim is reproduced below, with the step practiced by third parties, and not under the direction or control of the accused infringer, shown in boldface.

A method for conveying information among a plurality of computing devices associated with a plurality of users including a first user, a second user, and a third user, the method comprising:

providing an interface to a first computing device associated with the first user to define a relationship of an information package with at least one of a zone information, an object location information, or an object location event information and to define an information package access code;

conveying the information package to a second computing device associated with one of the second user or the third user based on said information package access code.

The court explained that, under Limelight Networks, Inc. v. Akamai Techs., Inc., 134 S. Ct. 2111 (2014), a method claim can be infringed only if a single actor directly infringes the claim under 35 USC § 271(a), i.e., “all steps of a claimed method are performed by or attributable to a single entity.” One actor can be responsible for another’s “performance of a method step ‘(1) where that entity directs or controls others’ performance, and (2) where the actors form a joint enterprise.’”

Judge Gilstrap rejected the defendant’s arguments that there was a triable issue of fact concerning whether the “to define” steps were performed at all. But the case turned on his agreement with the defendant’s position that the plaintiff could not show that these steps were performed by the defendant. The plaintiff’s expert’s report had repeatedly pointed to a “fleet administrator” as the party performing the “to define” steps. The court explained that “[t]he ‘fleet administrator’ is the customer, not [the defendant].” The plaintiff’s “responsive arguments to the contrary come close to contradicting their own expert’s . . . opinion.”

Moreover, the defendant’s establishment of “the manner or timing of how a customer performs the defining steps” did not amount to direction or control of the customer’s performance of the steps. The present facts were distinguishable from the facts supporting the Federal Circuit’s holding in the Limelight remand, Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020 (Fed. Cir. 2015) (en banc), that there was direction or control because the accused infringer "conditioned participation." Here, the plaintiff could allege only that the customer could not obtain “full benefit of the accused fleet-tracking services unless the customer enters the requisite data.” In Akamai, in contrast, “the accused infringer required customers to sign a standard form contract that delineated which claimed steps the customers ‘must perform.’”

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