TAKEAWAY: For claimed inventions implemented by multiple actors, practitioners may seek to reduce a divided infringement risk by identifying the commercially relevant actor for the disclosed technology and framing the remaining interactions from that actor’s perspective.
Many U.S. patented inventions involve actions divided among multiple actors: e.g., a diagnostic tool and a healthcare provider, a vehicle control system and roadside infrastructure, an industrial controller and a machine operator, or a client device and a cloud service, among some examples. Although a patent claim that mirrors the overall operation of the disclosed technology may appear comprehensive, Federal Circuit case law construing 35 U.S.C. § 271(a) generally requires that all steps of a method claim be performed by, or attributable to, a single entity. Akamai Techs., Inc. v. Limelight Networks, Inc., 797 F.3d 1020, 1022 (Fed. Cir. 2015) (en banc) (citing BMC Res., Inc. v. Paymentech, L.P., 498 F.3d 1373, 1379–81 (Fed. Cir. 2007)). Attribution may be established where one actor directs or controls another’s performance or where the actors form a joint enterprise. Akamai, 797 F.3d at 1022. Accordingly, practitioners should consider whether every affirmative claim limitation recited in an independent claim can be attributed to a single actor.
A useful drafting approach may be to identify the commercially relevant actor before finalizing an independent claim and evaluate whether each affirmative claim limitation can be attributed to that actor. Conduct performed by another participant may instead be recited from the perspective of the target (commercially relevant) actor. As an example, a claim directed to a method of diagnostic testing performed by a laboratory (relevant target) may recite a step of receiving a biological sample rather than requiring a healthcare provider (other participant) to obtain and send the sample. Similarly, a claim directed to a method of controlling a vehicle performed by a vehicle control system (relevant target) may recite a step of receiving roadway status information rather than requiring roadside infrastructure (other participant) to transmit the information. Framing the claim from a single actor’s perspective may preserve the underlying invention while reducing potential divided infringement concerns.
Depending on the technology and overall prosecution strategy, practitioners may consider pursuing additional claims directed to other commercially relevant actors where doing so provides meaningful claim coverage. However, claims directed at different actors may, in some circumstances, present restriction considerations. Accordingly, practitioners may wish to balance potential enforcement benefits with prosecution strategy when determining the overall claim set. The specification should describe the inventive concept (e.g., method, system, apparatus, etc.) from each actor’s vantage point so later claims to any one actor have sufficient support. Drafting the specification from the perspective of each principal actor may preserve flexibility to pursue claim sets that ultimately provide the strongest enforcement positions.