Partial Performance of Patented Method Outside the United States Negates Infringement Regardless of Direction or Control

Performance of one or more steps of a patented method outside the United States negates infringement even if the foreign steps are performed under the direction and control of a domestic accused infringer. "[Plaintiff] argues that [defendant] 'is liable under § 271(a) under a joint infringement theory when it performs one step of the claims and directs it [sic] Costa Rican subsidiary to perform the remaining steps on its behalf.' Theories of joint infringement are cognizable under § 271(a) where multiple actors are involved, and the patentee can show that one party 'control[s] or direct[s] each step of the patented process,' even if some steps are 'performed' by others. . . . However, the 'joint' aspect does not eliminate the need to show all steps or stages of the claimed process are performed in the United States. The theory of joint infringement concerns who performed the steps of a claim, not where the steps were performed."

Ormco Corporation v. Align Technology Inc., 8-03-cv-00016 (CACD, February 23, 2009, Order)