By Dennis Crouch
Tropp v. Conair Corporation (E.D.N.Y. February 28, 2012) Download TroppConair
A federal court in the Eastern District of New York recently justified its holding in a patent case based at least partially on a 2010 Patently-O posting. David Tropp's patent claim against Conair and others was denied based upon the joint patent infringement doctrines outlined in BMC Inc. v. Paymentech, 498 F.3d 1373, 1378 (Fed. Cir 2007) and Muniauction, Inc. v. Thompson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008).
Conair then asked that the case be ruled "exceptional" to justify an award of attorney fees. In rejecting that claim, the court cited Patently-O for the proposition that the line of cases on joint infringement left some amount of wiggle room for courts to find joint infringement absent facts sufficient to support traditional vicarious liability. Based upon potential ambiguity in the law, the court found that the plaintiff's theory of the case had not been improperly pursued, even if ultimately unsuccessful.
Muniauction did not indisputably hold that vicarious liability is the only way to satisfy the control or direction standard. It only made clear that (I) mere "arms-length cooperation" is not sufficient; and (2) vicarious liability, if established, is sufficient. Muniauction, 532 F.3d at 1329-30. At the least, such a reading of BMC and Muniauction is not objectively baseless. See Global Patent Holdings, LLC v. Panthers BRHC LLC, 586 F. Supp.2d 133 I, I 334-35 (S.D. Fla. 2008) (finding it "appears that" vicarious liability is required to satisfy the direction or control test, while also acknowledging that the "Federal Circuit did not explain with any specificity what it meant by 'direction or control'"); Dennis Crouch, MUNIAUCTION: Joint Infringement Requires Mastermind, Patently-O (July 15, 2008) http://www.patentlyo.com/patent/2008/07 /muniauction-joi.html (opining that Muniauction "left some wiggle room," open space to be further developed by ligation, such that a "later case could still hold that it is not necessary to show facts sufficient to support traditional vicarious liability"). Accordingly, this argument in particular, and defendants' motion in general, depends on an exaggerated view of the certainty and static determinism of the law of divided infringement.
I communicated with Tropp's attorney (and fellow blogger and Princeton alum) Ron Coleman who noted that an appeal on the merits of the case has already been filed.
Of course, the joint infringement (aka divided infringement) issue is being discussed in the halls of Madison Place in the pending en banc case of Akamai Tech v Limelight Networks.