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Tracking Patent Appeals

Joint Action Of Website And Its Users Can’t Infringe

Posted on | October 27, 2008 | 1 Comment

Willardscott
2008-1588 Global Patent Holdings v. Panther BRHC
SD/FL 08-80013
Judge Kenneth Marra

Plaintiff Global appeals from the decision of Judge Kenneth Marra dismissing the case for failure to state a claim.  Global owns 5,253,341, which is directed to a remote query communication system–the asserted claim has some limitations that are performed by the web server, but others that are ultimately performed by the web site user.  Since infringement requires two different actors, the issue is whether the user is acting under the "direction or control" of the web site operator, in this case defendant Panther.

This is the same plaintiff–represented by Niro Scavone–that has sued the Green Bay Packers and others, generally claiming a patent on downloading JPEGs from the internet.  You can see some of the coverage by David Donoghue at Chicago IP who reports that the patent in undergoing a second re-exam.

Claim 17 of the '341 patent claims:

A method for downloading responsive data from a remote server comprising the following steps:

(a) identifying a query via a data input means and inputting said query to remote query and data retrieval means;
(b) transmitting said query from said remote query and data retrieval means to said remote server via an input/output means;
(c) receiving a compressed or non-compressed response to said query at said remote query and data retrieval means from said remote server via said input/output means;
(d) displaying a presentation corresponding to said compressed or non-compressed response on output means;
(e) wherein said compressed or non-compressed response is compressed prior to receipt at said remote query and data retrieval means, and wherein said compressed response is decompressed at said remote query and data retrieval means using an asymmetric decompression technique corresponding to an inverse operation of the technique used to compress said compressed or noncompressed response.

Global conceded that infringement took place only upon the joint action of both the website and the user, but argued that Panther was liable under the joint infringer theory, recently elucidated by the Federal Circuit in BMC Resources v. Paymentech, 498 F.3d 1373 (Fed. Cir. 2007) [2006-1503].

In BMC, the joint infringer test was whether one party exerted "direction or control" over other(s) so as to make that party a direct infringer.  While acknowledging a lack of firm guidance on the standard, the court did determine that merely giving some directions or "how-to" instructions was not enough:

that the third party must perform the steps of the patented process by virtue of a contractual obligation or other relationship that gives rise to vicarious liability in order for a court to find “direction or control.” Without this kind of relationship, the Court does not believe that a finding of “joint infringement” is warranted under BMC Resources.

Because web users were free to visit, or not visit, the site and also free to decide what or how to download, search or navigate, there was no "direction or control" present in this case.  There was no contractual or agency relationship. 

The court also found that the indirect infringement claim failed to state a claim because there is no "predicate finding of direction infringement by some party."  Symantec Corp. v. Computer Associates International, Inc., 522 F.3d 1279, 1292 (Fed. Cir. 2008); see also Dynacore Holdings Corp. v. U.S. Phillips Corp., 363 F. 3d 1263, 1272 (Fed. Cir. 2004) (“Indirect infringement, whether inducement to infringe or contributory infringement, can only arise in the presence of direct infringement, though the direct infringer is typically someone other than the defendant accused of indirect infringement.”).

More reading:

Order
Category: Infringement

Comments

One Response to “Joint Action Of Website And Its Users Can’t Infringe”

  1. R. David Donoghue
    October 28th, 2008 @ 17:27

    Thanks for the link Kyle. As always, you have great content and analysis.

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