Table for Reference - Joint Patent Infringement
JapanPrinciple
An infringer must be engaged in the actssatisfying all the elements of a patented
invention.

GermanyDirect infringement of a patent is established only when theaccused product realizes all elements of the product patent, orthe accused person performs all steps of the method patent.

The U.S.

The U.K.

Single Entity Rule: Direct infringement requires a party to perform or use each and every To find direct patent infringement, the infringer must perform each and every element or step of the patent
step or element of a claimed method or product. (Warner–Jenkinson Co., Inc. v. Hilton
claim.
Davis Corp. , 520 U.S. 17, 117 S.Ct. 1040, 137 L.Ed.2d 146 (1997), etc.)

Cases where liability for inrfingement shall be established even though the alleged infringer is partly engaged in the acts working the invention
The following liabilities based mainly on the German Civil CodeJoint/divided infringement as to method claims
Joint/Divided Patent Infringement
No Supreme Court precedent which ruled
can apply in patent infringement cases.
- standards for vicarious liability
Rules that apply to Joint/divided patent infringement are those relating to tortious act ("joint tortfeasance").
clearly on what circumstances would be
An entity responsible for others' performance of method steps in two sets ofWhen two or more persons jointly perform an act of infringement, they are liable for patent infringement assufficient.
circumstances: (1) where that entity directs or controls others' performance, and (2)joint tortfeasors.
1. Joint Tortfeasance (“Mittäterschaft”)
wheretheactors
forma
jointenterprise.
(AkamaiTechs.,
Inc.
v.
Limelight
Networks,
Inc.
,
Joint/divided infringement contains at least: 1) vicarious joint liability, like in master-servant / principal-agent
Approaches such as the followings are
Multi parties who consciously and deliberately cooperate in
797
F.3d
1020,1022
(Fed.
Cir.
2015);
generallyreferredtoas"AkamaiV")
relationships,2) joint liability through “procurement” by inducement, incitement, or persuasion, and 3) joint
discussed in judgements of inferior courts
committing the act of infringement are jointly liable as infringers
liability
through“common design.”
and in academic society as to establishment according to Section 830 of the German Civil Code.
of patent infringement even when all of theelements cannot be satisfied without
2. Secondary Liability (“Nebentäterschaft”)
1. Direction or control
1. Vicarious joint liability
combining acts of multi entities.
Negligent actions of multi parties, who do not cooperate
Two prong test: 1) an alleged infringer conditions participation in an activity or receipt
Vicarious joint liability may arise in the context of specific relationships between A and B: i.e., an employerconsciously and deliberately, can establish liability when theirof a benefit upon performance of a step or steps of a patented method, and 2) an alleged and an employee, and a principal and an agent.
Tool theory(Koursk [1924], Sea Shepherd UK v Fish & Fish Ltd [2015] UKSC 10, etc.)
When an entity uses an act of a third party actions cause infringement by combination according to Section infringer establishes the manner or timing of that performance
840oftheGermanCivilCode.
In
thoseinstances,thethirdparty'sactions
areattributedtotheallegedinfringer
such
as a pawn or tool, the act of the third party
that the alleged infringer becomes the single actor chargeable with direct infringement.
shall be evaluated as having been performed
2. Procurement(Akamai V ; see also Eli Lilly and Co. v. Teva Parenteral Medicines, Inc. , 845 F.3d 1357
by the entity, and the entity can be regarded 3. Interference Liability (“Störerhaftung”)
An interferer is a person who willfully contributes to an
A will be jointly liable for patent infringements committed by B in a situation where A procures B to commit(Fed. Cir. 2017))
as implementing acts satisfying all theinfringementina
sufficiently
causalmanner.
Theinterferer
must
theinfringing act by inducement, incitement or persuasion.
elements.
have
actualorconstructive
knowledgeoftheinfringement,i.e.
(Resolution
Chemicals v H. Lundbeck A/S [2013] EWHC 739 (Pat), Sea Shepherd UK )* Electrodeposition image forming method
theinterferer
eitherknows
abouttheinfringement,
oratleastcase (Judgement of the Tokyo District Court
should have known about it, such that he/she had the possibility
dated on September 20th, 2001; Case
3. Common design
to stop further infringement. See Section 1004 of the German Civil 2. Joint Enterprise
No.2000wa20503)
Wheretwoor
moreactors
forma
jointenterprise,
allcanbecharged
withtheactsofA will be jointly liable for patent infringement where A and B act in concert with one another pursuant to aCode.
the other, rendering each liable for the steps performed by the other as if each is a single common design.
Control & direction theory
actor.
(Koursk , Resolution Chemicals , Sabaf Spa v MFI Furniture Centres Ltd and Managhetti Spa [2003] RPC 264, Sea
Even when an act of a third party cannot be
A joint enterprise requires proof of four elements:
Shepherd UK )regarded as a pawn or tool, as far as an(1) an agreement, express or implied, among the members of the group;
entity controls and directs the act of the(2) a common purpose to be carried out by the group;
To establish accessory liability in tort it is not enough to show that A did acts which facilitated B’s
third party, the act of the entity shall be(3) a community of pecuniary interest in that purpose, among the members; andcommission of the tort. A will be jointly liable with B if they combined to do or secure the doing of acts whichevaluated prescriptively to affirm its liability(4) an equal right to a voice in the direction of the enterprise, which gives an equal right constituted a tort. This requires proof of two elements. A must have acted in a way which furthered thefor infringement.
of control.
commission of the tort by B; and A must have done so in pursuance of a common design to do or secure the* Spectacle lens supply system case(Akamai V )doing of the acts which constituted the tort. (Sea Shepherd UK )(Judgement of the Tokyo District Court datedon December 14th, 2007; Case No.
Referential Cases of the Federal Court of Justice
A common design does not call for any finding that A has explicitly mapped out a plan with B. Their tacit
2004wa25576)
agreement will be sufficient. Nor, is there any need for a common design to infringe. It is enough if A and B
MP3 player import case [2009] (BGH, GRUR 2009, 1142 - Xa ZR
combine to secure the doing of acts which in the event prove to be infringements. (Unilever Plc v Gillette (UK)
2/08)
Limited [1989] RPC 583)
Systemclaims
Direct infringer is also who enables or facilitates theimplementation of the infringing act by a third party, although he
1. To "use" a system
could obtain with reasonable effort knowledge that the act
Joint direct infringement theory
To "use" as to System Claims
To “use” a system for purposes of infringement, a party must put the invention into
supported by him infringes the absolute right of the patentee.
As far as there are objective relevance
service, i.e., control the system as a whole and obtain benefit from it. (NTP, Inc. v.
between acts of multiple persons and“The claimed invention requires there to be a host computer. In the age that we live in, it does not matter
Research in Motion, Ltd. , 418 F.3d 1282 (Fed. Cir. 2005), Centillion Data Sys., LLC v.
subjective relevance, they shall be evaluated Audio signal encoding case [2015] (BGH, X ZR 69/13)
where the host computer is situated. [...] Its location is not important to the user of the invention nor to theQwest Commc’ns Int’l, Inc. , 631 F.3d 1279 (Fed. Cir. 2011); see also Synchronoss Tech.,
Infringer of a negligent patent infringement must also be theas having performed jointly acts of direct
claimed gaming system. In that respect, there is a real difference between the claimed gaming system and an
Inc. v. Dropbox, Inc. , 987 F.3d 1358 (Fed. Cir. 2021))
infringement and each actor shall be liable person who caused the infringement through his own
ordinary machine. ”
Proof of an infringing “use” of the claimed system under § 271(a) requires the patentee
reproachable behavior.
not only for the acts performed of his/her“[I]t is pertinent to ask who uses the claimed gaming system. The answer must be the punter. Where does he
Reproachable conduct in this sense may lie, for example, in the to demonstrate that the direct infringer obtained benefit from each and every element of use it? [....] [I]t is not straining the word “use” to conclude that the United Kingdom punter will use the claimed
own but for the infringement as a whole.
fact that acts of a third party aimed at the use of the patent are the claimed system. In addition, the direct or indirect control required is the ability to(Views are different on whether joint
gaming system in the United Kingdom, even if the host computer is situated in, say, Antigua. Thus the supply ofplace the system as a whole into service. (Intell. Ventures I LLC v. Motorola Mobility LLC ,not prevented in breach of duty. (MP3 player import , etc.)
intention to commit infringing act jointly is
the CD in the United Kingdom to the United Kingdom punter will be intended to put the invention into effect inReproachable conduct in this sense may also exist if a person, 870 F.3d 1320)
essential and the extent of mutual
the United Kingdom.”in the application of a process, takes advantage of the fact that
understanding which shall be sufficient.)"A punter who uses the [...] system will be using the whole system as if it was in the United Kingdom. He will in* Porous molded body case (Judgement of certain steps of the protected process are carried out by a third
substance use the host computer in the United Kingdom, it being irrelevant to the punter where it is situated."
the Osaka District Court dated on May 4th, party and can be included in his own action.
(Menashe v. William Hill [2002] EWHC 397 (Pat),[2002] EWCA Civ 1702)
2. Vicarious liability
1961; Case No.1960yo493)
The Akamai V standard for vicarious liability applies for method claims, but theCentillion court discussed the principles of vicarious liability from method claims in thecontext of system claims. (Centillion )