A Lack Of Control

Submitted by patentadmin on Wed, 12/08/2010 - 21:55

By now the reader should be aware that a method claim of a patent is only infringed when ALL of the steps are performed by a single party – known in the trade as the “scum-sucker.” If different claim steps are performed by different parties, infringement occurs only when the actions of ALL of the parties are controlled or directed by a single entity – known in the law as the “mastermind.” Fine; so what constitutes the necessary “control or direction,” especially in the context of methods practiced on the internet? (Zamora Radio, LLC v. Last.FM, Ltd., et al.)

Zamora sued a number of companies, including Last.FM, for allegedly infringing a patent directed to a streaming media system commonly referred to as “internet radio.” All of the asserted claims of the patent-in-suit involve some steps that occur at the user’s computer and other steps occurring at a server. No single entity provides both a server and a user’s computer. The various defendants moved for summary judgments of noninfringement.

Motions granted. “Here, the servers … are provided by Defendants, while the … personal computers used by the end-users … are not provided by any of the Defendants … because the claims require multiple actors to meet the limitations of the accused claims and because there is no dispute that the parties involved do not control or direct each others’ actions or their computers, Defendants entitled to summary judgment of no infringement …”

Didn’t the Defendants, who provided software running on the end-users’ computers exercise “control or direction?” No, said the Court. Making information available to a third party, instructing the third party, or facilitating or arranging for the third party’s involvement in the alleged infringement is not sufficient” to constitute the requisite “control or direction.”

THE LESSON TO BE LEARNED: Drafting of patent claims directed to internet-enabled inventions requires great care to ensure that all of the claimed steps are performed by a single entity. Prosecuting a patent application pro se is always dangerous; it is doubly so when dealing with internet inventions.

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