Sec. 271(a) (Direct) Infringement Of Method Claim

  • BASICS: A method patent claim is not infringed unless all the steps are carried out because the rights it confers “extend only to the claimed combination of elements, and no further.” Where multiple actors perform the claimed steps: “Section 271(a) is not limited solely to principal-agent relationships, contractual arrangements, and joint enterprise, … Rather, to determine direct infringement, we consider whether all method steps can be attributed to a single entity.” Akamai Tech. IV (Fed. Cir. 08/13/15) (en banc) (per curiam) (rev’g JMOL of no infringement). See Limelight (U.S. 06/02/2014) (“The Federal Circuit held in Muniauction that a method’s steps have not all been performed as claimed by the patent unless they are all attributable to the same defendant, either because the defendant actually performed those steps or because he directed or controlled others who performed them.”; assuming without deciding that this holding is correct).

a) “use” of claimed method

  • Method Claim Directly Infringed Only By Performing All Steps Of That Method: A method claim confers rights in a particular claimed set of steps (elements) not any particular element. “Method claims are only infringed when the claimed process is performed, not by the sale of an apparatus that is capable of infringing use.” Ormco (Fed. Cir. 08/30/06) (in context of obviousness); accord Brumfield (Fed. Cir. 03/27/24) (“There is no established recognition in patent law of direct infringement by ‘making’ a ‘method’; and, indeed, we have indicated that direct infringement is limited to using the method.”); Ericsson (Fed. Cir. 12/04/14) (finding sufficient evidence to support inducement infringement; citing many decisions). Thus, where a patent claimed a method in which a dental appliance is replaced at 2 to 20 day intervals, the Federal Circuit “reject[ed] the district court’s holding that the ‘intervals’ limitation of this claim merely requires that the devices be ‘capable of’ being replaced within a 2 to 20 day interval. . . . [Under U.S. Patent Law,] this claim requires that the devices actually be replaced within the specified period.” Ormco (Fed. Cir. 08/30/06) (in obviousness context). See NTP (Fed. Cir. 08/02/05) (rev’g denial of JMOL of non-infringement of method claims where one method step performed outside the U.S.; “because a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited”); E-Pass Techs. (Fed. Cir. 01/12/07) (aff’g Summ. J. of no direct infringement of method claims). “We hold that a party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).” Ricoh (Fed. Cir. 12/23/08); accord Ericsson (Fed. Cir. 12/04/14) (“there is a difference between the instructions contained in software and the process within the meaning of § 271(a).”) “The law is unequivocal that the sale of equipment to perform a process is not a sale of the process within the meaning of 271(a).” Joy Techs. Inc. v. Flakt, Inc., 6 F.3d 770, 773 (Fed. Cir. 1993). Cf. Cardiac Pacemakers (Fed. Cir. 08/19/09) (en banc) (the “components of the process are the steps of the process,” and supplying an intangible step is a physical impossibility.). Must prove use, e.g., not merely assume that defendant-manufacturer must have tested its product in U.S. Meyer Intell Prop (Fed. Cir. 08/15/12) (rev’g Summ. J. of infringement).
    • Software Is Not A Method: “A process is nothing more than the sequence of actions of which it is comprised,” and “consists of doing something, and therefore has to be carried out or performed. In contrast, software is not itself a sequence of actions, but rather it is a set of instructions that directs hardware to perform a sequence of actions.” Ricoh (Fed. Cir. 12/23/08).
    • A “System” Claim Is Not A Method Claim: “[M]ethod claims require the performance of steps; claims that describe physical components of a whole are system, or apparatus, claims.” Jazz Pharm. (Fed. Cir. 02/24/23) (aff’g injunction requiring that patent be delisted from Orange Book; patent with only system claims is not patent on “method of using the drug” as that phrase is used in statute on listing of patents in the Orange Book, 21 U.S.C. § 355(b)(1)(A)(viii) of Hatch-Waxman Act).
    • But Providing Tool That When Activated Automatically Performs A Step May Constitute Performing That Step, If Tool Supplier Also Performs A Step Of The Method (aka “SiRF Infringement”): Without citing above precedent, a panel held that a chip manufacturer directly infringed a method claim, one step of which was performed on an end-user’s device, because the step was performed using the manufacturer’s chip and software, after the user activated certain features of the software: “SiRF infringes as its devices and software dictate the performance of the ‘processing’ and ‘representing’ steps. Once the technology is enabled, SiRF’s SiRFstarIII chip and software, designed and built by SiRF, automatically perform the disputed steps of the claims at issue because the SiRFstarIII chips are programmed by SiRF to use the InstantFix ephemeris data automatically if it has been transmitted to the remote device. Neither SiRF’s customers (the equipment manufacturers and software developers) nor the end users of the GPS receivers can modify the use of the EE files by SiRF’s software or the functionality of the SiRFstarIII chip. Once the GPS receiver is enabled and ready to process the data, only SiRF’s actions are involved in ‘processing’ or ‘representing’ the data. SiRF performs all of the claim limitations …, and therefore directly infringes the asserted claims.” The panel did not discuss whether the accused chips had non-infringing uses. SiRF Tech. (Fed. Cir. 04/12/10). But see IBM (Booking Holdings) (Fed. Cir. 05/22/19) (2-1) (non-precedential) (aff’g Summ. J. no direct infringement by provider of Web application and mobile app. (nor divided infringement) where claims require a step of storing information in cache at user’s station, that storing is performed by “the user, or the device, or the browser’s manufacturer,” despite defendant’s app. including a cache directive requesting such caching step be performed; distinguishing SiRF because there “after the user put the system into operation, the user was no longer involved in the performance of the method steps.”); Koninklijke Philips (Fed. Cir. 07/28/16) (non-precedential) (refusing to extend SiRF to situation where device automatically performs method but only when under control of the customer, distinguishing SiRF as case where device supplier performed some of the steps of the method); Ericsson (Fed. Cir. 12/04/14) (distinguishing SiRF as case where device supplier performed some of the steps of the method, and its device automatically performed the rest.) [Consider Seeking S. Ct. Review.]
    • TIPS:
  • Using Product Made By Patented Method May “Use” Method: At least in context of 28 U.S.C. § 1498, where process was begun outside U.S. and product imported and used in U.S.: “the product resulting from the practice, which embodies the patented process, was imported into, or used in, the United States. Therefore the process has been ‘used’ without a license or lawful right.” Zoltek II (Fed. Cir. 03/14/12). But see Limelight (U.S. 06/02/2014).
  • Computer Simulation Of Product Operation May Use Claimed Method: Carnegie Mellon (Fed. Cir. 08/04/15) (practiced claimed method by running computer simulation of an under-development chip on signals produced by hard drive).
  • Method Claim Is Directed To Set Of Actions Over Time: “A ‘method’ in a claim … is a ‘process,’ and ‘method’ and ‘process’ have a clear, settled meaning: a set of actions, necessarily taken over time.” Nassau Precision (Fed. Cir. 06/06/14) (non-precedential) (claim directed to a method of designing a product, not manufacturing process nor the product having a particular design [note: no discussion of Sec. 101]).
  • Method Claim May Recite A Contingent Step And It Need Not Be Performed If Its Condition Is Not Satisfied: “It is of course true that method steps may be contingent. If the condition for performing a contingent step is not satisfied, the performance recited by the step need not be carried out in order for the claimed method to be performed.” Cybersettle (Fed. Cir. 07/24/07) (non-precedential) (method steps here not contingent so had to be performed for infringement); Applera (Fed. Cir. 03/25/10) (non-precedential) (step “(c) conditional and need not be performed if result achieved with steps (a) and (b): “(c) repeating steps (a) and (b) until the sequence of nucleotides is determined.”). Cf. Ex parte Schulhauser (PTAB 04/28/16) (precedential) (under broadest reasonable interpretation, steps triggered only if a condition precedent is met need not be performed, such that an obviousness ground need not address those conditional steps; citing Cybersettle and Applera for parallel rule in infringement analyses). See Lincoln Nat’l (Fed. Cir. 06/23/10) (aff’g infringement, no need to prove account ever exhausted only that system configured so would perform step even if account exhausted: “periodically paying the scheduled payment to the owner for the period of benefit payments, even if the account value is exhausted before all payments have been made”).
    • TIPS:

b) “offer to sell” a method

  • Unclear If One Can Offer To Sell A Method: “A party that sells or offers to sell software containing instructions to perform a patented method does not infringe the patent under § 271(a).” Ricoh (Fed. Cir. 12/23/08) (but not deciding whether it is possible to sell or offer to sell a method); see NTP (Fed. Cir. 08/02/05) (“Congress has consistently expressed the view that it understands infringement of method claims under section 271(a) to be limited to use” but “we need not and do not hold that method claims may not be infringed under the ‘sells’ and ‘offers to sell’ prongs of section 271(a).”). But patent owners may cite Quanta in their favor on this issue. In ruling that the sale of certain components of a combination exhausts patent claims directed to a method of using that combination, S. Ct. stated: “It is true that a patented method may not be sold in the same way as an article or device, but methods nonetheless may be ‘embodied’ in a product, the sale of which exhausts patent rights.” Quanta (U.S. 06/09/2008).

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