Faculty Journal Articles and Book Chapters


Two cases decided by the U.S. Court of Appeals for the Federal Circuit articulate the standards for joint infringement. In BMC Resources, Inc. v. Paymentech, L.P., the court ruled that to find liability in situations where steps of a method claim are performed by multiple parties, the entire method must be performed at the control or direction of the alleged direct infringer — the mastermind. Approximately one year later, in Muniauction, Inc. v. Thomson Corp., the Federal Circuit clarified that “the control or direction standard is satisfied in situations where the law would traditionally hold the accused direct infringer vicariously liable for the acts committed by another party that are required to complete performance of a claimed method.”

District courts have attempted to apply the holdings of BMC Resources and Muniauction in the two years following the Federal Circuit’s decisions. In deciding their cases, district courts have focused on how the asserted claims are drafted and the relationships between the accused infringer and third parties. Absent significant evidence of how an accused infringer controlled third parties, patent holders have found it difficult to support claims of infringement under a joint infringement theory. Further, courts have suggested that carefully drafted claims directed to a single actor would eliminate the need for patent holders to rely solely on joint infringement theory.

Publication Title

Texas Intellectual Property Law Journal

Document Type



joint infringement, divided infringement, internet, software



To view the content in your browser, please download Adobe Reader or, alternately,
you may Download the file to your hard drive.

NOTE: The latest versions of Adobe Reader do not support viewing PDF files within Firefox on Mac OS and if you are using a modern (Intel) Mac, there is no official plugin for viewing PDF files within the browser window.