The Patent Act was not explicitly designed to address infringement claims that are based on the actions of multiple actors. For example, if a patent claims a method of performing steps A, B, and C, and each of these steps is performed by a separate actor, then the patent statutes provide no clear guidance as to whether any or all of the actors can be found liable under a theory of joint liability. Through the years, district courts struggled to develop their own jurisprudence on the subject[1] while the Federal Circuit largely remained silent. But two fairly recent Federal Circuit rulings indicate that a patentee whose claims depend on the actions of multiple actors will often be unable to prove any infringement of method claims and may be limited to attempting to prove indirect infringement for apparatus claims.

Last fall, the opinion in BMC Resources, Inc. v. Paymentech, L.P.[2] made a big splash in the area

of joint infringement. In that case, the Federal Circuit was faced with the question of whether an accused infringer could be held liable for directly infringing method claims that were written so as to require the participation of several different actors, all of whom were acting independently.[3] Specifically, BMC involved two patents that were directed to methods of paying bills telephonically

using a credit or debit card.[4] The methods required, among other things, prompting a caller to enter certain payment information (including a debit or credit card number), having a remote payment network (such as an ATM network) verify the availability of credit or funds, and, if sufficient funds existed, charging the credit or debit card account, and reflecting the payment in the relevant

billing account.[5] Accordingly, the claims relied on the participation of a payee’s agent, a remote payment network, the card-issuing financial institution, and a caller.[6]

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