December 27, 2017

IP Partner Mark Scarsi Comments on Federal Circuit Joint Infringement Ruling

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Joint Infringement Ruling Could Expand Liability

Intellectual Property Litigation & Technology partner Mark Scarsi commented in a Law360 article on a recent Federal Circuit decision related to joint infringement. On December 19, the appeals court vacated a district judge’s decision to grant summary judgment of noninfringement to lockmaker Travel Sentry and said the company may be liable for jointly infringing a lock patent with the Transportation Security Administration (TSA).

“I think this decision is definitely breaking new ground. The court's read here seems so much broader to me,” noted Mark Scarsi in the article.

“This case is going to make it much easier for plaintiff’s lawyers to argue divided infringement,” he said. "You don't need that much control or that much direction, and you don't even need a firm contractual relationship."

According to Law360, “The case hinged on the Federal Circuit’s Akamai Technologies, Inc. v. Limelight Networks, Inc. en banc decision from 2015, which expanded infringement liability in situations where more than one party performs the steps of a patent.” The Akamai ruling appeared to suggest more concrete benefits and control than were present in the Travel Sentry case, Mr. Scarsi said, “so this decision seems to really give enough wiggle room so that any time two parties are working together as one enterprise, you can find joint infringement.”

Mr. Scarsi added: “the ruling could also encourage patent owners to argue that their patents are directly infringed by multiple actors, rather than alleging that one party induced or contributed to another’s infringement, since those scenarios are more difficult to prove and require knowledge of the patent.”