By this time, the reader really should be aware that joint infringement of a method claim requires that one party – known as the “mastermind” (we are not making this up) – must control the actions of any and all other parties – known as the “chumps” – involved in performing other steps of the claimed method.
Given that this law is clear and well settled, it would seem that it could be promptly raised by an accused infringer so as to avoid the expense and inconvenience of a trial that the misguided patentee was doomed to lose. Wrong! (Soverain Software LLC v. J.C. Penney Corporation, Inc. et al.)
Soverain sued Penney for infringement of a method patent. Early in the litigation, Penney moved (lawyerspeak for “filed a motion”) to dismiss the claim on the grounds that “the patents-in-suit require the participation of multiple parties in order for … infringement to occur.” The Court, not disagreeing with Penney’s argument, nevertheless denied the motion. “To the extent that Penney is arguing that it cannot infringe the patents – and therefore Soverain could not have adequately pled infringement – because Penney does not direct or control all of the infringing elements, that argument is premature at this stage of the case.”
THE LESSON TO BE LEARNED: Good news for attorneys – they can continue billing their time; bad news for both parties – they have to pay the bills.
Another lesson to be learned: timing is everything.