On Tuesday, Sep. 4, 2012, in Mirror Worlds v. Apple, Inc., No. 2011-1392, the Federal Circuit (Lourie, Newman and Prost (dissent-in-part)) affirmed an E.D. Tex. court’s ruling that overturned a jury verdict of induced infringement based on failure of proof of an underlying direct infringement. This case provides incremental insight into induced infringement post-Akamai.
The patent owner tried to establish direct infringement by Apple’s customers based on user manual instructions, software reviews and Apple surveys that identified the accused “Spotlight” file review utility as a beneficial feature that customers could use to perform the claimed method steps. Citing E-Pass, the Court ruled that the mere presence of instructions teaching claimed steps is not sufficient to establish direct infringement. Nor was direct infringement established merely because some users turned on or generally used the accused features – the patentee must show that all claimed steps actually were performed.