Archive for January, 2011

Testimony Before the House Subcommittee on Intellectual Property

Monday, January 31st, 2011

Robert Shapiro, the former Under Secretary of Commerce for Economic Affairs, also testified before the House Subcommittee on Intellectual Property last week.  His testimony was quite interesting.  It included some intriguing statistics such as: 

“Over the years 1995-2001, the development of new information technologies accounted for 28 percent of those productivity gains, capital investment in those technologies accounted for another 34 percent, research and development accounted for 10 percent, and changes in the organization of firms and worker training in response to these innovations accounted for another 10 percent. By applying this approach to data for more recent years, other researchers estimate that nearly 90 percent of U.S. economic growth from 2001 to 2003 can be attributed to increases in the stock of intangible assets.”


“Finally, research by the McKinsey Global Institute has documented the role of innovation in the value of large corporations. They found that in 1984, the book value of the 150 largest U.S. public companies – what their physical assets could be sold for on the open market – was equal to 75 percent of their market caps: Three-quarters of the value of large American companies was derived from its physical assets. By 2005, the book value of the 150 largest American companies was equal to just 36 percent of their market caps: Nearly two-thirds of their value is now based on their intangible assets, principally the value of the ideas protected by patent and copyrights.”

His written statement is available here: [Link].  If you agree with his conclusions, you might want to pass along some of these statistics to your local Congressperson or business journal editor.

David Kappos’ Testimony Before House Subcommittee on Intellectual Property

Monday, January 31st, 2011


David Kappos testified before the House Subcommitte on Intellectual Property last week in a hearing entitled “How an Improved U.S. Patent and Trademark Office Can Create Jobs.”  You can watch his testimony here.  The House had to stand in recess during the hearing in order to vote on the House floor.  So, the first video shows the first part of the hearing and the second video shows the second part.  Mr. Kappos’ written statement is available here: [Link].  

At about the 27 minute mark into the second video, Mr. Kappos comments that in a matter of days the PTO is going to publish new rules in the Federal Register for the PTO’s Track I examination program.  That program would guarantee a first office action within 3 months and a decision on patentability/grant within 12 months.  The fee would be $4,000 (with no small entity break, given the PTO’s current limitations on fee setting authority).

If you have difficulty viewing the clips below, you might try this link for the full video: [Link].

Video 1

Video 2

Claim Construction and the Microsoft Computer Dictionary

Wednesday, January 26th, 2011

computer-dictionary1Have you ever wondered if Microsoft’s computer dictionary has been used against it in patent litigation to construe patent claim terms?  Apparently, at the district court level in Uniloc v. Microsoft an argument was made by Uniloc that relied on Microsoft’s computer dictionary to construe claim language.  That argument was noted in the oral argument of the subsequent appeal to the Federal Circuit  [Listen].  The dictionary argument did not prevail at the district court level, however. [Link].

“Has the Temple of Justice been Defiled?”

Wednesday, January 19th, 2011

     One of the issues that came up in the oral argument of the recently decided case of iLOR v. Google, 2010-1117 (Fed. Cir. Jan. 11, 2011) was whether the district court was in error in awarding expert fees to Google.  To award such fees is beyond 35 U.S.C. §285 alone and requires invoking the inherent powers of the court.  However, the standard to be applied by the court to invoke such inherent powers is whether “fraud has been practiced upon it, or that the very temple of justice has been defiled.”   So, during the oral argument, Chief Judge Rader inquired whether the temple of justice had been defiled: [Listen].

Supreme Court Patent Case of the Week

Sunday, January 16th, 2011

The second patent decision by the U.S. Supreme Court was Evans v. Eaton, 16 U.S. 210 (1818):

16 U.S. 210 (1818)

3 Wheat. 210


Supreme Court of United States.

223*223 February 6th. C.J. Ingersoll, for the plaintiff.

Hopkinson and Sergeant, contrà.

232*232 *503] *March 7th, 1818. MARSHALL, Ch. J., delivered the opinion of the court.

In this case, exceptions were taken in the circuit court, by the counsel for the plaintiff in error, 1st. To the opinion of the court, in admitting testimony offered by the defendant in that court. 2d. To its opinion in rejecting testimony offered by the plaintiff in that court. 3d. To the charge delivered by the judge to the jury.

Under the 6th section of the act for the promotion of useful arts, and to repeal the act heretofore made for that purpose, the defendant pleaded the general issue, and gave notice that he would prove at the trial, that the improved hopperboy, for the use of which, without license, this suit was instituted, had been used previous to the alleged invention of the said Evans, in several places (which were specified in the notice), or in some of them, “and also at sundry other places in Pennsylvania, Maryland, and elsewhere in the United States.” Having given evidence as to some of the places specified in the notice, the defendant offered evidence as to some other places 233*233 not specified. This evidence was objected to by the plaintiff, but admitted by the court; to which admission, the plaintiff’s counsel excepted.

The 6th section of the act appears to be drawn, on the idea, that the defendant would be not at liberty to contest the validity of the patent on the general issue. It, therefore, intends to relieve the defendant from the difficulties of pleading, when it allows him to give in *evidence matter [*504 which does affect the patent. But the notice is directed for the security of the plaintiff, and to protect him against that surprise to which he might be exposed, from an unfair use of this privilege. Reasoning merely on the words directing this notice, it might be difficult to define, with absolute precision, what it ought to be include, and what it might omit. There are, however, circumstances in the act which may have some influence on this point. It has been already observed, that the notice is substituted for a special plea; it is further to be observed, that it is a substitute to which the defendant is not obliged to resort. The notice is to be given only when it is intended to offer the special matter in evidence on the general issue. The defendant is not obliged to pursue this course, he may still plead specially, and then the plea is the only notice which the plaintiff can claim.[1] If, then, the defendant may give in evidence, on a special plea, the prior use of the machine, at places not specified in his plea, it would seem to follow, that he may give in evidence its use, at places not specified in his notice. It is not believed, that a plea would be defective, which did not state the mills in which the machinery alleged to be previously used was placed.

But there is still another view of this subject, which deserves to be considered. The section which directs this notice, also directs, that if the special matter stated in the section be proved, “judgment shall be rendered for the defendant, with costs, and the patent shall be declared void.” The notice might be intended, not only for the information of the plaintiff, *but for the purpose of spreading on the record the cause for which [*505 the patent was avoided. This object is accomplished by a notice which specifies the particular matter to be proved. The ordinary powers of the court are sufficient to prevent, and will, undoubtedly, be so exercised, as to prevent the patentee from being injured by the surprise.

This testimony having been admitted, the plaintiff offered to prove that the persons, of whose prior use of the improved hopperboy the defendant had given testimony, had paid the plaintiff for licenses to use his improved hopperboy in their mills, since his patent. This testimony was rejected by the court, on the motion of the defendant, and to this opinion of the court, also, the plaintiff excepted. The testimony offered by the plaintiff was entitled to very little weight, but ought not to have been absolutely rejected. Connected with other testimony, and under some circumstances, even the opinion of a party may be worth something. It is, therefore, in such a case as this, deemed more safe to permit it to go to the jury, subject, as all testimony is, to the animadversion of the court, than entirely to exclude it.


“If … then” Claims

Saturday, January 15th, 2011

If you are currently dealing with patents that recite “if …then” claim limitations, you might find the oral argument in Sutton v. Nokia, 2010-1218 (Fed. Cir. Dec. 15, 2010) to be of interest.  The Federal Circuit only issued a Rule 36 opinion in the case; so, for background, the district court opinion in Sutton v. Nokia, 647 F.Supp.2d 737 (E.D. Texas 2009) is available here [Link].

 The claim language discussed in the oral argument is shown below.  Most of the oral argument focuses on whether the claim can logically satisfy both steps (1) and (2) or whether the claim fails for impossibility: 

(1) if the received packet has a predetermined header and the receiver is configured to receive unmodified messages, then processing the packet as a modified packet according to steps (2) to (8), otherwise sending the packet to a user’s application as an unmodified paging message,

(2) if the receiver is configured to receive only data information messages processing the packet according to steps (3) to (8),

(3) treating the packet as 7 bit characters and reconstituting any characters indicated by a predetermined flag,

(4) packing the 7 bit characters into 8 bit characters,

(5) checking a frame byte for type of packet and compression,

(6) decompressing the packet to data,

(7) validating the subchannel and if valid releasing security passing the data to an end user application, and

(8) if the message is a control message parsing and processing the control message.

Arguing contingent claim limitations requires a flair for formal logic, such as this statement by the patent owner’s counsel [Listen]:

That’s denying the antecedent fallacy, where you read into the contingent step that if the contingent is false then the negative of the consequent must be true.  You’re basically saying if the receiver is not configured as in step 2 then don’t do step (3) to (8).  And, that’s the logical fallacy that we pointed out in our briefing . . . . 

Another case mentioned during the oral argument is Cybersettle v. National Arbitration Forum, 2007-1092 (Fed. Cir. July 24, 2007).  That opinion is availble here for reference: [Link].  That non-precedential case makes the following statement about “if . . . then” claims without citation of any precedent:

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.

Id. at page 7 of slip opinion.



You can listen to the entire oral argument in Sutton v. Nokia here: [Listen].

You can read the court’s opinion in Sutton v. Nokia here: [Read].

Supreme Court Patent Case of the Week

Monday, January 10th, 2011

It strikes me that the patent bar is much more familiar with the opinions issued by the Federal Circuit than it is with US Supreme Court patent cases.  I thought it might be interesting to post a historical Supreme Court case each week.  In just a few years, we should be able to polish off all of the US Supreme Court’s patent opinions.

The Supreme Court’s first patent case is a short one and was decided in 1810 as Tyler v. Tuel, 10 U.S. 324 (1810): 

PRIOR HISTORY:       THIS was a case certified from the circuit court of the district of Vermont.

Tyler and others, as assignees of Benjamin Tyler, the original patentee of an improvement in grist-mills, which he called the wry-fly, or side wheel.

After a verdict for the plaintiffs, the judges of the court below, upon a motion in arrest of judgment, were divided in opinion upon the question “whether the plaintiffs, by their own showing, are legal assignees to maintain this action.”

There were two counts in the declaration.

The first set forth the substance of the statutes upon the subject of patents for useful discoveries, the facts necessary to entitle the patentee to a patent for his invention, and the patent itself, together with the specification, dated February 20, 1800.

The averment of the assignment of the patent right to the plaintiffs was in these words: “And the plaintiffs further say, that the said Benjamin Tyler afterwards, to wit, on the 15th day of May in the year last aforesaid, at said Claremont, by his certain deed of that date by him signed, sealed, and to the plaintiffs then and there by the said Benjamin delivered, and ready to be shown to the court, did in consideration of the sum of six thousand dollars, to him before that time by the plaintiffs paid, grant, bargain, sell, assign and set over to the plaintiffs, their executors, administrators and assigns, all the right, title and privilege in, unto, and over the said improvement in the said patent described, and thereby vested in the said Benjamin in any part of the United States, excepting in the counties of Chittenden, Addison, Rutland and Windham, in the state of Vermont.”

The second count, omitting the recital of the statutes and of the patent, stated concisely the same facts.  The averment of the assignment of the patent right was as follows: “And the said Benjamin Tyler, afterwards, and before the expiration of the said fourteen years, to wit, at said Claremont, on the 15th day of May, in the year last aforesaid, by his certain deed of that date by him then and there signed, sealed, and to the plaintiffs delivered, assigned to the plaintiffs the full and exclusive right and liberty of making, constructing, using, and vending to others to be used, the said improvement, in and throughout the United States, excepting in the counties of Chittenden, Addison, Rutland and Windham, in the state of Vermont, as fully and amply as by said letters patent the said Benjamin Tyler was thereto entitled, and all his title and interest in and unto said improvement excepting as aforesaid.”

COUNSEL: Hubbard, for the defendant, contended that the assignment, being of part of the patent right only, was not such as would authorize the assignees to maintain an action on the statute.  (Laws U.S. vol. 2. p. 202. § 4, 5.

The fourth section of the act declares, “that it shall be lawful for any inventor, his executor or administrafor, to assign the title and interest in the said invention at any time, and the assignee, having recorded the said assignment in the office of the secretary of state, shall thereafter stand in the place of the original inventor both as to right and responsibility, and so the assignees of assigns to any degree.”

The fifth section provides, “that if any person shall make, devise and use, or sell the thing so invented, the exclusive right of which shall, as aforesaid, have been secured to any person by patent, without the consent of the patentee, his executors, administrators or assigns first obtained in writing, every person so offending shall forfeit and pay to the patentee a sum that shall be at least equal to three times the price for which the patentee has usually sold or licensed to other persons the use of the said invention; which may be recovered in an action on the case founded on this act, in the circuit court of the United States, or any other court having competent jurisdiction.”

It is evident from the whole purview of the statute, especially from the 4th, 5th, 6th and 10th sections, that no person can be considered as an assignee under the statute, who is not the assignee of the whole right of the original patentee.


Rodney, Attorney-General, contra.


Upon a motion in arrest of judgment, if the judges are divided, the motion fails, and the judgment must be entered of course.  It must follow the verdict, unless sufficient cause be shown to the contrary.  1 Salk. 17. Ld. Raym. 271.  3 Mod. 156.


If there can be no assignment but of the whole right, then the exception of particular counties is void; it being repugnant to the prior words and intention of the grant.


So if the jury find a fact inconsistent with a fact previously found, the latter fact shall be rejected.  Cro. Car. 130.  3 East. 6 Bac. Abr. 381.  Plowd. 564.  1 Bl. Com. 89.  2 Co. 83. 8 Co. 56. Dyer, 351.  1 Co. 3. 1 Vent. 521. Cor. Eliz. 244.


The whole passed at law by the deed of assignment.  The exceptions are in the nature of equitable assignments.


On a subsequent day the court directed the following opinion to be certified to the circuit court for the district of Vermont, viz. 



 It is the opinion of the court that the plaintiffs, by their own showing, are not legal assignees to maintain this action, in their own names, and that the judgment of the circuit court be arrested. 

The “Latent Code” Cases

Thursday, January 6th, 2011

Standing in my garage a few weeks back, I was kicking myself for having just locked my keys inside the house.   I had the flu and wanted to get back inside to get some rest.  After about 30 minutes of trying to jimmy the lock, I was fairly certain that a locked door (with no key on hand) is not “capable” of being used as a door – rather it is pretty much just a wall.  As I took a sledgehammer to the door handle another 20 minutes later, I was convinced that this was true.

The recent case of Finjan, Inc. v. Secure Computing Corp. et al., 2009-1576 (Fed Cir. Nov. 4, 2010) presented a similar issue.  In that case, the court dealt with the issue of whether a “locked” module of a software program satisfied part of a patent claim for purposes of patent infringement.  The “locked” module in the accused product was not operable unless a key was purchased to unlock the module.  The Federal Circuit as shown below characterized the issue as whether the module was “capable” of operation.  The panel concluded that even though the pertinent modules were “locked” the apparatus and Beauregard claims were still infringed.

The Finjan case raises several interesting issues.  First, in view of Judge Moore’s comments during the oral argument of eSPEED, Inc. et al. v. Brokertec USA, et al., 480 F.3d 1129 (Fed. Cir. 2007), does it sound like she would agree with this decision?  Second, does the court’s analysis effectively construe/apply the claims to cover an inoperable device and in doing so raise the issues of whether the claims satisfy 35 USC §101 and 35 USC §112?  Third, even if the claims are still valid while reading on an inoperable device, do they present that rare instance for application of the reverse doctrine of equivalents? 

The Finjan Opinion

It will first be helpful to have some background on the Finjan opinion.  The accused infringer’s software program was sold with part of the software in an inoperable state.  The pertinent software module that was necessary for purposes of patent infringement could not be used until the user purchased a key to unlock the module.  After the user purchased the key and unlocked the module, the module could be used.  The panel recognized this fact.  And, the accused products clearly were evaluated for infringement in their locked state.  See Finjan, slip opinion at page 9 (“Defendants claim that our court has held that ‘locked’ or disabled products cannot infringe apparatus claims.  Their reliance on our precedent is misplaced”).  Similarly, in the oral argument of Finjan, Judge Linn acknowledged the argument that if software was locked then its steps could not be performed. [Listen].

The accused infringer argued that an inoperable software module cannot infringe.  However, the panel declined to accept that argument.  Namely, this is what the panel had to say in regard to the “inoperability” issue in its opinion (the claims at issue can be viewed here [Link]) :

While the argument is not waived, we disagree with the merits of Defendants’ theory. Defendants claim that our court has held that “locked” or disabled products cannot infringe apparatus claims. Their reliance on our precedent is misplaced.

In Southwest Software, Inc. v. Harlequin Inc., this court affirmed denial of a new trial on infringement, after a verdict of non-infringement, because the evidence showed that the accused software product “included a manual step which avoided the automatic selection feature of the patented invention even though the code for automatic selection remained in place.” 226 F.3d 1280, 1291 (Fed. Cir. 2000). Defendants interpret Southwest to hold that locked code cannot infringe. However, the claim at issue in that case was a method that required performance of each claimed step. Id. at 1285. Here, the claims at issue are “system” and “storage medium” claims, which do not require the performance of any method steps. See NTP, Inc. v. Research in Motion, Ltd., 418 F.3d 1282, 1318 (Fed. Cir. 2005) (“[T]he use of a process necessarily involves doing or performing each of the steps recited. This is unlike use of a system as a whole . . . .”).

Defendants also rely on ACCO Brands, where we overturned a jury verdict of inducement because the patentee failed to “either point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit.” 501 F.3d at 1313. The asserted apparatus claims covered locking devices with pins in a specific configuration. The accused device could “be operated in either of two modes,” one infringing and one not. Id. We explained that, in the absence of any evidence that customers actually operated the device in the infringing mode, direct infringement could not be inferred. Defendants insist that under ACCO Brands, an accused device does not infringe if it “can be used at any given time in a non-infringing manner.” Defs.’ Principal Br. 33 (citing 501 F.3d at 1313). However, in ACCO Brands, the claim language required the locking device’s pin to extend through a slot in a specific configuration. 501 F.3d at 1310. Here, by contrast, Finjan’s apparatus claims do not require that the proactive scanning software be configured in a particular way to infringe—only that it be programmed for performing the claimed steps. For example, claim 32 of the ’194 patent covers “[a] system for execution by a server that serves as a gateway to a client, the system comprising: a security policy; an interface . . . ; a comparator . . . ; and a logical engine . . . .”

Defendants insist that the asserted claims require actual operability. The asserted “system” claims include “engines,” such as a “logical engine” (’194 patent claim 32), a “communications engine” (’780 patent claim 9), and a “linking engine” (’822 patent claim 12). Defendants cite the testimony of Finjan’s expert Dr. Giovanni Vigna, who stated at trial that an engine “has an active task to perform,” and is an “active component.” Transcript at 410:6-7, 22. Seizing upon the word “active,” Defendants argue that the source code must be “enabled” to infringe. However, neither the claim language nor Vigna’s testimony supports this contention.

As we have cautioned, “in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred.” Fantasy Sports Props. v., Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). Accordingly, we have held that, to infringe a claim that recites capability and not actual operation, an accused device “need only be capable of operating” in the described mode. Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). Thus, depending on the claims, “an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation.” Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001); see also Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009) (noting that the “reasonably capable” test applies “only to claim language that specifies that the claim is drawn to capability”).

In this case, Finjan’s non-method claims describe capabilities without requiring that any software components be “active” or “enabled.” The system claims recite software components with specific purposes: “a logical engine for preventing execution” (’194 patent claim 32), “a communications engine for obtaining a Downloadable” (’780 patent claim 9), or “a linking engine . . . for forming a sandbox package” (’822 patent claim 12) (emphases added). The storage medium claims similarly cover capability. Claim 65 of the ’194 patent recites a “computer-readable storage medium storing program code for causing a server that serves as a gateway to a client to perform the steps of: receiving . . . ; comparing . . . ; and preventing execution . . . .” This language does not require that the program code be “active,” only that it be written “for causing” a server (’194 patent claim 65) or a computer (’780 patent claim 18) to perform certain steps. Vigna’s infringement analysis did not contradict this language. He defined an “engine” as “some kind of component whose task is to operate some kind of analysis or transformation.” Transcript at 410:4-5. Thus, Vigna explained that an engine is a portion of code designed to perform an indicated operation, but is not necessarily unlocked or active. Defendants admit that program code for proactive scanning is “literally present” on all accused products. Oral Arg. at 1:53-58, available at Secure’s Senior Vice President Michael Gallagher testified that even if a software module was turned off, “[t]he module is resident in the binary source code that is in the product.” Transcript at 722:19-22. Thus, it is undisputed that software for performing the claimed functions existed in the products when sold—in the same way that an automobile engine for propulsion exists in a car even when the car is turned off. 2

We addressed a similar infringement scenario in Fantasy Sports, where we held that software for playing fantasy football could infringe a claim to a “computer for playing football.” 287 F.3d at 1118. The defendants who sold the software argued that because their product was a “modifiable software tool,” direct infringement occurred only when users configured it to play games. Id. at 1117. Rejecting this contention, we explained that “although a user must activate the functions programmed into a piece of software by selecting those options, the user is only activating means that are already present in the underlying software.” Id. at 1118. Infringement occurred because the code “was written in such a way as to enable a user of that software to utilize the function . . . without having to modify that code.” Id. That analysis applies here. The code for proactive scanning was “already present” in Defendants’ accused products when sold. There is no evidence that customers needed to modify the underlying code to unlock any software modules. The fact that users needed to “activate the functions programmed” by purchasing keys does not detract from or somehow nullify the existence of the claimed structure in the accused software. Therefore, the jury’s infringement verdict on the system and media claims was based on a “legally sufficient evidentiary basis” and consistent with the “weight of the evidence.” Pediatrix, 602 F.3d at 545-46 & n.9. That portion of the verdict is affirmed.

Finjan, slip opinion at pages 9-13.


Judge Moore’s Comments During Espeed Oral Argument

                In the case of eSPEED, Inc. et al. v. Brokertec USA, et al., 480 F.3d 1129 (Fed. Cir. 2007), a panel that included Judge Moore and Judge Linn (the author of the Finjan opinion) addressed a similar issue during oral argument – although the panel’s written opinion ultimately did not address the issue.  In eSPEED, the panel was trying to assess whether a software routine in a prior art software program was sufficiently unavailable to a user so as not to be operable prior art for invalidity purposes – essentially trying to apply the doctrine that “that which infringes if later, anticipates if earlier.”  Listen to the following sound bites from that oral argument to gain some context and to hear Judge Moore’s comments on the line of “latent code” cases: [Listen], [Listen], [Listen], and [Listen]. 

It strikes me from listening to Judge Moore’s comments that she viewed what she referred to as the “latent code” cases as requiring software code to be “callable” before it could serve as prior art.  That would similarly suggest that “latent code” must be callable in order to infringe in circumstances like the Finjan case.  Therefore, it will be interesting to see how Judge Moore treats the issue in the future or if the Finjan case is subjected to en banc review.

                Judge Moore referred to the “latent code” cases in the eSPEED oral argument; and, the opinion in Finjan refers to some prior cases as well.  I’ve tried to compile some of the pertinent statements from some of those cases in the table below.

Case Citation




Background Facts


Intel Corp. v. ITC, 946 F.2d 821 (Fed. Cir. 1991)


Review of ITC’s finding of infringement under the Doctrine of Equivalents


 EPROMs sold to customers without any intent that they be used in “page mode operation.”  Nevertheless, the EPROMs were capable of operating in “page mode operation.”

GI/M also contends that the Commission’s finding of infringement under the doctrine of equivalents is incorrect because, although GI/M’s “old” design 51 Series EPROMs are capable of performing page mode

addressing, the EPROMs were never sold to operate in page mode. No customer was ever told how to convert the chip to page mode operation — or even that such conversion was possible. GI/M argues that an alleged infringer must intend its parts to be used in an infringing fashion and cites Fromberg, Inc. v. Thornhill, 315 F.2d 407, 415, 137 USPQ 84, 89 (5th Cir. 1963), in support of its argument. As noted by

Intel, there is no intent element to direct infringement. See 35 U.S.C. § 271(b) and (c). Fromberg deals with induced and contributory infringement and is therefore inapposite. Because the language of claim 1 refers to “programmable selection means” and states “whereby when said alternate addressing mode is selected” (emphases added), the accused device, to be infringing, need only be capable of operating in the page mode. Contrary to GI/M’s argument, actual page mode operation in the accused device is not required.

High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F. 3d 1551 (Fed. Cir. 1995)


Review of district court’s finding of likelihood of infringement for purposes of a

preliminary injunction



Camera was sold with set screws securing the camera in place so that it could not be “rotatably coupled” during normal operation.

The district court found a likelihood of infringement based on its conclusion that, but for the set screws, the camera is otherwise coupled to the body member in such a manner that it is capable of being rotated.” But a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim. See Hap Corp. v. Heyman Mfg. Co., 311 F.2d 839, 843, 135 USPQ 285, 288 (1st Cir. 1962) (“The question is not what [a device] might have been made to do, but what it was intended to do and did do…. [T]hat a device could have been made to do something else does not of itself establish infringement.”), cert. denied, 373 U.S. 903, 83 S.Ct. 1290, 10 L.Ed.2d 198 (1963).


The district court did not consider it relevant whether New Image intended or anticipated that dentists would remove the set screws and render the AcuCam camera “rotatably coupled” during normal

operation, or whether any dentist had actually operated the AcuCam in that fashion. Instead, relying on this court’s decision in Intel Corp. v. United States Int’l Trade Comm’n, 946 F.2d 821, 20 USPQ2d 1161

(Fed. Cir. 1991), the district court held that it was enough that the AcuCam camera could be converted to a “rotatably coupled” configuration with relative ease. The court read Intel to mean that if a particular device can be altered without undue difficulty to operate in an infringing manner, the device, as sold, must be deemed to infringe.


Intel does not support so broad a holding. All that was required by the limitation at issue in Intel was that the claimed invention, an integrated circuit memory device, was “programmable” to operate in a certain

manner. The accused device, although not specifically designed or sold to operate in that *1556 manner, could be programmed to do so; that is, it was “programmable” to operate in the designated mode. The

claim at issue in Intel therefore read on the accused device, as made and sold. The AcuCam camera, by contrast, is not rotatable within its housing unless the AcuCam is altered, at least to the extent of removing or loosening the set screws that secure the camera to the housing.


The fact that it is possible to alter the AcuCam so that the camera becomes “rotatably coupled” to its housing is not enough, by itself, to justify a finding that the manufacture and sale of the AcuCam infringe

HTMI’s patent rights. Of course, if a device is designed to be altered or assembled before operation, the manufacturer may be held liable for infringement if the device, as altered or assembled, infringes a valid

patent. See Paper Converting Mach. Co. v. Magna-Graphics Corp., 745 F.2d 11, 19, 223 USPQ 591, 597 (Fed. Cir. 1984) (components of a machine held to infringe when components are ready for assembly and serve “no useful non-infringing purpose”); Hansen v. Siebring, 231 F.Supp. 634, 644, 142 USPQ 465, 472 (N.D.Iowa), aff’d, 346 F.2d 474 (8th Cir.), cert. denied, 382 U.S. 943, 86 S.Ct. 400, 15 L.Ed.2d 352

(1965). That principle is inapplicable here, however, because the record provides no reason to disregard the set screws in determining the character of the coupling between the AcuCam camera and its housing.


As the district court found, New Image did not design the AcuCam camera to rotate within its housing during operation; nor was there any reference to the rotation of the camera in the AcuCam promotional

materials that were made part of the record. In addition, it does not appear from the record that removing the set screws would serve any functional purpose not already accomplished by other means, and HTMI offered no evidence that any user of the AcuCam had loosened or removed the set screws prior to or during actual use.


Under these circumstances, HTMI has not established that the AcuCam is “rotatably coupled” to its housing in spite of the set screws that prevent the camera from rotating. Accordingly, on the present state of the record we cannot agree with the district court that HTMI is likely to succeed in proving that the AcuCam infringes claim 24 of the ‘001 patent.

Telemac Cellular Corp. v. Topp Telecom, 247 F.3d 1316 (Fed. Cir. 2001)


Review of district court’s granting of summary judment of literal infringement



Due to a restriction built into the software program stored in the telephone’s memory, a user is prevented from using the software to place international calls.


The parties do not dispute that the claimed “complex billing algorithm” requires calculation of charges using call rates based on classification of calls into local, long distance, international and roaming call categories. Based on that construction, the district court found that Topp’s TRACFONE system does not infringe claim 1 of the ‘100 patent. The court noted that the TRACFONE system, as manufactured and sold, does not allow users to place international calls. The court determined that the accused system does not store the international call rates in its memory and does not utilize international call rates in its billing algorithm.


Telemac contends that, even though Topp has chosen not to permit direct dialing of international calls, the capability of billing for international rates is nonetheless present in the phone’s source code. According to Telemac, because Topp’s system is capable of being modified to place, and charge for, international calls, Topp’s system infringes.


Under the precedent of this circuit, however, that a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement. High Tech Med.

Instrumentation v. New Image Indus., Inc., 49 F.3d 1551, 1556, 33 USPQ2d 2005, 2008-09 (Fed. Cir. 1995). In this case, due to a restriction built into the software program stored in the telephone’s

memory, a user of Topp’s system is prevented from directly placing international calls. Therefore, international rates, and the calculation of charges for such calls, are not included in the billing algorithm of

the accused device. The district court correctly concluded that Telemac’s allegations of literal infringement must fail.

Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336 (Fed. Cir. 2001)



Review of district court’s grant of summary

judgment of no literal infringement



The software products pcAnywhere and Norton Antivirus were accused of infringing. A key issue turned on whether the programs sufficiently stored data so as to satisfy the meaning of storage in the claim.

Symantec’s expert sought to prove that a file becomes accessible to the operating system or other programs before it is scanned for viruses by the NAV Scan Engine by running four tests. Hilgraeve’s expert asserted that these tests do not prove that Symantec’s products do not infringe, and that even if they showed that the products do not infringe under the test circumstances, they do not prove noninfringement under normal operating conditions.


We agree that tests of an accused device under unusual conditions are not necessarily relevant to an infringement analysis. For example, in determining whether a product claim is infringed, we have held that an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation. See Intel Corp. v. United States Int’l Trade Comm’n, 946 F.2d 821, 832, 20 USPQ2d 1161, 1171  (Fed. Cir.1991); Key Pharms., Inc. v.Hercon Labs. Corp., 981 F.Supp. 299, 310 (D.Del.1997), aff’d, 161 F.3d 709, 48 USPQ2d 1911 (Fed. Cir. 1998); Huck Mfg. Co. v. Textron, Inc., 187 USPQ 388, 408 (E.D.Mich.1975) (“The fact that a device may be used in a manner so as not to infringe the patent is not a defense to a claim of infringement against a manufacturer of the device if it is also reasonably capable of a use that infringes the patent.”); cf. High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1556, 33 USPQ2d 2005, 2009 (Fed. Cir.1995) (finding that an accused device does not infringe if it does not infringe in its normal configuration, even if it may be altered into an infringing configuration under unusual circumstances). So too the sale of a device may induce infringement of a method claim, even if the accused device is capable of non-infringing modes of operation in unusual circumstances.


Fantasy Sports Properties, Inc. v., Inc., 287 F.3d 1108 (Fed. Cir. 2002)



Review of summary judgment of non-infringement



The accused products were computerized fantasy football games.   The user playing the game can cause the computer to perform claimed functions simply by playing the game and selecting those functions. 


There is no mention of the functions being locked, being available by password, or being available after input of a key. Rather, the user has several options at various points in the game.  A user was able to select the proper sequence to create an infringing sequence.

Fantasy concedes that SportsLine’s Fantasy Football and Football Challenge games do not infringe the ‘603 patent under the district court’s interpretation of the “bonus points” limitation. Fantasy argues,

however, that the district court erred by granting summary judgment with respect to the product even under the court’s construction of that limitation. Fantasy contends that the district court

erroneously analyzed that product under a contributory infringement framework, arguing that under Intel Corp. v. ITC, 946 F.2d 821, 20 USPQ2d 1161 (Fed. Cir. 1991), the product directly infringes because it is capable of being configured to award bonus points when a player scores out of position. In support of that argument, Fantasy cites the declaration of Shanen Elliott, one of Fantasy’s Product Specialists, who stated that he “was able to customize the `’ football game to include essentially the same scoring system that is described in the [‘603] patent,” i.e., a system that awards bonus points for unusual plays such as out-of-position scoring. SportsLine responds that the product does not directly infringe because it is not a computerized fantasy football game operated by SportsLine, but rather is a modifiable software tool that enables subscribers to operate

their own fantasy football leagues on customized internet web pages. SportsLine also argues that Fantasy failed to prove any underlying direct infringement that could serve as the basis for a determination that it contributorily infringes the ‘603 patent.


We conclude that the district court erred in granting summary judgment with respect to the product because genuine issues of material fact exist as to whether that product infringes under the proper infringement analysis. Although we disagree with Fantasy’s characterization of Intel as requiring a finding of infringement when a device is capable of being altered in an infringing manner, we nevertheless agree with Fantasy that the product must be analyzed under a direct infringement framework.


Intel involved a claim to a memory chip in an integrated circuit having, inter alia, programmable selection means for selecting [an] alternate addressing mode.” Id. at 831, 20 USPQ2d at 1170 (emphasis added).  The defendant in Intel argued that even though its products could be modified to infringe that claim, the fact that those products were capable of infringing alone could not support a finding of infringement. Id. at 832, 20 USPQ2d at 1171. Although we concluded that the defendant’s products did infringe, we explained our basis for doing so as follows: “Because the language of claim 1 refers to `programmable selection means’ … the accused device, to be infringing, need only be capable of operating in the page mode.” Id. (emphases added). Intel therefore does not stand for the proposition, as argued by Fantasy, that infringement may *1118 be based upon a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent. See High Tech Med. Instrumentation, Inc. v.

New Image Indus., Inc., 49 F.3d 1551, 1555-56, 33 USPQ2d 2005, 2008-09 (Fed. Cir. 1995) (distinguishing Intel and holding that the fact that the accused device could be altered in way that satisfies the claim term “rotatably coupled” did not per se justify a finding of infringement); see also Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330, 58 USPQ2d 1545, 1554 (Fed. Cir. 2001) (“[T]hat a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement.”). Rather, as in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred.


In the present case, claim 1 is directed to “[a] computer for playing football,” and thus the claims of the ‘603 patent read on a computer executing fantasy football game software.[3] Claim 1 also sets forth a

number of functionally defined means that that software must contain, including a “means for scoring … bonus points” for unusual scoring plays. Software is a set of instructions, known as code, that directs a

computer to perform specified functions or operations. Thus, the software underlying a computer program that presents a user with the ability to select among a number of different options must be written in such a way as to enable the computer to carry out the functions defined by those options when they are selected by the user. Therefore, although a user must activate the functions programmed into a piece of software by selecting those options, the user is only activating means that are already present in the underlying software. Otherwise, the user would be required to alter the code to enable the computer to carry out those functions. Accordingly, in order to infringe the ‘603 patent, the code underlying an accused fantasy football game must be written in such a way as to enable a user of that software to utilize the function of awarding bonus points for unusual plays such as out-of-position scoring, without having to modify that code. In other words, an infringing software must include the “means for scoring … bonus points” regardless whether that means is activated or utilized in any way.


SportsLine argues that the product cannot directly infringe because it is not a “computer for playing football,” as required by the claims. SportsLine contends that the district court properly found that the product is a “modifiable software tool” that is “not a fantasy football game operated by SportsLine.” Fantasy II at 11. We disagree. The record clearly demonstrates

that the product is software installed on a computer that enables a user to play fantasy football games over the Internet. Indeed, the web pages advertising the product promote it as “a utility designed to run a head-to-head Fantasy Football League,” *1119 and that “getting started is easy” in that a user may immediately begin playing fantasy football after performing a few simple steps. That material goes on to explain that “[a]fter you create your league website a simple Scoring Wizard will allow you to configure the many powerful options briefly described below.” One of those options is the ability to have “position-specific scoring” by creating “different scoring configurations for each position.” (Emphases added.) Consequently, a user need only utilize the Scoring Wizard program, as demonstrated by Mr. Elliott’s declaration, to play a fantasy football game that provides for the awarding of bonus points for out-of-position scoring, and thus that means is necessarily present in the software that operates the product. We therefore conclude that no reasonable juror could find that the product is not software installed on a “computer for playing football” that may directly infringe the ‘603 patent.

Acco Brands v. ABA Locks Mfr. Co., 501 F. 3d 1307 (Fed. Cir. 2007)


Review of jury verdict of direct infringement



The accused product was a lock that could be operated in two different modes – one infringing and one non-infringing.

ACCO’s argument, however, is unpersuasive. In order to prove direct infringement, a patentee must either point to specific instances of direct infringement or show that the accused device necessarily

infringes the patent in suit. See Dynacore Holdings Corp. v. U.S. Philips Corp., 363 F.3d 1263, 1275-76 (Fed. Cir. 2004). Here, the parties do not dispute that the accused device can be operated in either of two modes—the infringing Dornfeld method or the noninfringing press-to-lock method. Because the accused device can be used at any given time in a noninfringing manner, the accused device does not necessarily infringe the ‘989 patent.


The record further shows that ACCO failed to point to specific instances of direct infringement. The sole witness at trial who testified to having used the lock in an infringing manner was ACCO’s expert, Dr. Dornfeld. However, the record contains no evidence of actual users having operated the lock in an infringing manner. ACCO proffered no witness testimony of actual Belkin key lock users, or surveys of Belkin’s customers, that would indicate that a user, aside from the expert retained for this particular litigation, directly infringed the ‘989 patent. Moreover, we are not  persuaded by ACCO’s assertion that Dr.

Dornfeld’s testimony combined with the ABA hang card provides substantial evidence of direct infringement. The record indicates that Belkin key lock users received instructions describing the noninfringing press-to-lock method and thus provides no basis for concluding that Belkin key lock users directly infringed the patent. Furthermore, Belkin did not provide the ABA hang card to purchasers. Indeed, the district court found in its enhanced damages determination that there was “no evidence that Belkin knew of the hang card or was involved in its preparation.”



The lack of evidence of specific instances of direct infringement is further buttressed by Dr. Dornfeld’s own testimony. When questioned about whether users other than himself used the lock in the infringing mode, Dr. Dornfeld had no opinion on that issue:


Q: Okay. Do you have any opinion as you sit here today on whether there are users other than yourself who operate the key lock in the alternate mode of operation?


A: I don’t have any opinion on that, no.

* * *


Q: Now, it’s true, isn’t it, that you testified earlier in your deposition in this case that you are not aware of anyone else using the key lock in the alternate mode that you’ve proposed?


A: I didn’t ask anybody if they did that, no. So I am not personally aware of anybody else doing it the way I do it.


Thus, based on the record before us, we find no evidence of direct infringement.


We are further unpersuaded by ACCO’s reliance on Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336 (Fed. Cir. 2001), which states that an accused device may be found to infringe a product claim “if it is

reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation.” Id. at 1343. That broad legal statement does not alter the requirement that ACCO must prove specific instances of direct infringement or that the accused device necessarily infringes the patent in suit, in order to sustain the jury verdict of induced infringement. Hypothetical instances of direct infringement are insufficient to establish vicarious liability or indirect infringement. See Dynacore, 363 F.3d at 1274. Moreover, as we stated in Dynacore, “[t]he mere sale of a product *1314 capable of

substantial non-infringing uses does not constitute indirect  infringement of a patent.” Id. at 1275. Thus, ACCO’s argument is unavailing.

Ball Aerosol and Specialty Container, Inc. v. Limited Brands, Inc. et al., 555 F.3d 984 (Fed. Cir. 2009)



Review of district court’s summary judgment finding  of literal infringement.





Claim related to a candle holder and required that the protrusions of the holder  must be resting upon the cover.  The claim did not recite that the protrusions were “capable” of resting upon the cover.


The accused product was not sold in that configuration but was capable of being re-configured in that orientation.

We next turn to the district court’s grant of summary judgment of infringement. The district court found infringement because the accused Travel Candle “is reasonably capable of being configured in such a way that its holder is supported by the cover when the cover is placed open end down on a surface.” Infringement Opinion, No. 05-CV-3684, slip op. at 19. On appeal, Limited argues that the court erred in reading the claims to cover any product “reasonably capable” of being configured in the same manner. Limited asserts that because claims 1 and 5 only read on a candle tin actually placed in the claimed

configuration and because there is no evidence of the Travel Candle ever being so configured, Limited is entitled to a summary judgment of noninfringement. In response, BASC argues that claims 1 and 5 are

apparatus, not method, claims. BASC contends that an apparatus patent claim with functional elements is infringed if the accused product is reasonably capable of being used without substantial modification in the manner recited in the claim.


We agree with Limited that the district court erred in granting summary judgment of infringement of claims 1 and 5. The claim language clearly specifies a particular configuration in which the protrusions must be

“resting upon” the cover. ‘969 patent col.5 l.55; id. col.6 l.29. Thus, BASC’s reliance on cases that found infringement by accused products that were reasonably capable of operating in an infringing manner is

misplaced, since that line of cases is relevant only to claim language that specifies that the claim is drawn to capability. See Fantasy Sports Props., Inc. v., Inc., 287 F.3d 1108, 1117-18 (Fed. Cir. 2002) (clarifying that infringement is not proven per se by a finding that an accused product is merely capable of infringing because “in *995 every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred”). Here, the language of claims 1 and 5 of the ‘969 patent specifies that infringement occurs only if the accused product is

configured with the cover being used as a base underneath a candle holder with feet. That the Travel Candle was reasonably capable of being put into the claimed configuration is insufficient for a finding of

infringement. See ACCO Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (rejecting a “reasonably capable” standard for direct infringement). Rather, infringement requires “specific instances of direct infringement or that the accused device necessarily infringes the patent in suit.” Id. BASC concedes that it has no proof that the Travel Candle was ever placed in the infringing configuration, and it is clear that the Travel Candle does not necessarily have to be placed in the infringing configuration.  We thus reverse the district court’s finding of infringement, and we remand to the court with instructions to issue a summary judgment of noninfringement.



An important issue raised by the Finjan opinion is whether a claim can be construed/applied to cover inoperable devices and still satisfy the utility/operability requirement as well as the enablement requirement.  By effectively construing the claim language to cover “locked” computer code, the panel has construed the claim language to cover an inoperable device.  Thus, the court adopts an interpretation that one might think naturally suggests the claim is invalid under 35 U.S.C. §101 for utility purposes. 

While invalidity under §101 is a logical conclusion, the case law is not crystal clear on the issue.  Namely, a claim can fall into one of three categories: (1) the claim covers only operable devices; (2) the claim covers only inoperable devices; or (3) the claim covers both operable and inoperable devices.  Clearly, if the claim falls into the first category, then it is valid with respect to this issue.  And, if the claim falls into the second category, it is clearly invalid.  If the claim falls into the third category, however, the case law suggests it is a tougher call for §101 purposes.

 For example, in EMI Group N. Am. Inc. v. Cypress Semiconductor Corp., 268 F.3d 1342, 60 USPQ2d 1423, 1427-28 (Fed. Cir. 2001) the court said:

A claimed invention having an inoperable or impossible claim limitation may lack utility under 35 U.S.C. § 101 and certainly lacks an enabling disclosure under 35 U.S.C. § 112. Raytheon Co. v. Roper Corp., 724 F.2d 951, 956, 220 USPQ 592, 596 (Fed. Cir. 1983). Discussing impossibility, this court stated: “Even if some of the claimed combinations were inoperative, the claims are not necessarily invalid…. [I]f the number of inoperative combinations becomes significant, and in effect forces one of ordinary skill in the art to experiment unduly in order to practice the claimed invention, the claims might indeed be invalid.” Atlas Powder Co. v. E.I. du Pont De Nemours & Co., 750 F.2d 1569, 1576-77, 224 USPQ 409, 414 (Fed. Cir. 1984).


In Envirotech Corp. v. Al George, Inc., 730 F.2d 753 (Fed. Cir. 1984), the court said:

Even if defendant’s argument of inadequate experimentation or inexact correlation were to apply, the fact that an invention has only limited utility and is only operable in certain applications is not grounds for finding lack of utility.  Raytheon Co. v. Roper Corp., 724 F.2d 951, 958-59, 220 USPQ 592, 598 (Fed. Cir. 1983); Carpet Seaming Tape Licensing Corp. v. Best Seam, Inc., 694 F.2d 570, 578, 216 USPQ 873, 880 (9th Cir. 1982).  Some degree of utility is sufficient for patentability.  E. I. du Pont de Nemours & Co. v. Berkley and Co., 620 F.2d 1247, 1260, fn. 17, 205 USPQ 1, 10 (8th Cir. 1980).  Further, the defense of non-utility cannot be sustained without proof of total incapacity. Id.

In these previous cases where the claim could cover operable and inoperable devices, the accused products fell into the operable bucket.  In Finjan, however, the accused product falls into the inoperable bucket.  Finjan is therefore unique in its application of a claim to an inoperable product.  It is difficult to follow the logic that a patent should be entitled to cover an inoperable device.

                Judge Gajarsa articulated a similar argument in his concurring opinion in SmithKline Beecham Corp. v. Apotex et al., 403 F.3d 1331 (Fed. Cir. 2005).  In that concurring opinion, he noted that a claim could read on both naturally occurring and unnaturally occurring forms of paroxetine hemihydrate.  He concluded “[b]ecause the claimed PHC hemihydrate falls into both categories, it is not patentable under section 101.”  Judge Gajarsa noted that patentability “requires ‘an examination of the contested claims to see if the claimed subject matter as a whole’ comes within the subject matter described in section 101.”  The same logic applies to the accused products in the Finjan case — only it is inoperable software rather than naturally occuring paroxetine hemihydrate that creates the offending surplusage in the claim scope.  Judge Gajarsa’s concurrence in SmithKline Beecham v. Apotex is also noteworthy in that it outlines how the Federal Circuit is entitled to raise the §101 issue sua sponte.

                Another way to look at the utility issue is to analyze the court’s construction as permitting a claim to cover a mere aggregation of elements that serve no useful purpose.  The Supreme Court has stated in Lincoln Engineering:

“The mere aggregation of a number of old parts or elements which, in the aggregation, perform or produce no new or different function or operation than that theretofore performed or produced by them, is not patentable invention.”

 Lincoln Engineering Co. v. Stewart-Warner Corp., 303 U.S. 545, 549, 58 S.Ct. 662, 664, 82 L.Ed. 1008 (1938).


Similarly, the lack of operability raises the issue of invalidity for lack of enablement under 35 USC §112.  Section 112 seems to be the stronger basis for invalidity.  For example, in Process Control Corp. v. HydReclaim Corp., 190 F.3d 1350, 52 USPQ2d 1029, 1034-35 (Fed. Cir. 1999) the court stated:

Lack of enablement and absence of utility are closely related grounds of unpatentability. . . . The enablement requirement of 35 U.S.C. § 112, ¶ 1 requires that the specification adequately discloses to one skilled in the relevant art how to make, or in the case of a process, how to carry out, the claimed invention without undue experimentation. . . . The utility requirement of 35 U.S.C. § 101 mandates that any patentable invention be useful and, accordingly, the subject matter of the claim must be operable. . . . If a patent claim fails to meet the utility requirement because it is not useful or operative, then it also fails to meet the how‑to‑use aspect of the enablement requirement.

                The panel opinion in Finjan did not address the utility issue or the enablement issue.  Quite clearly, the accused infringer’s code was inoperable as sold and as considered for infringement purposes.  If a user had tried to use the software as sold, the “locked” software modules would not have worked.  Therefore, the desired utility of the claim would not have been achieved.    It seems that the panel’s opinion holding that inoperable software infringes, raises the issue of whether the claims run afoul of both 35 U.S.C. §101 and 35 U.S.C. §112.


The Reverse Doctrine of Equivalents

                From an academic perspective, it is interesting to consider this case in regard to the “reverse doctrine of equivalents.”  The reverse doctrine of equivalents is an equitable doctrine that can be applied by the court after a finding of literal infringement.  The reverse doctrine of equivalents stems from a statement by the Supreme Court in Graver Tank v. Linde Air Prod. Co., 339 U.S. 605, 607 (1950).  Namely, an accused article may avoid infringement, even if it is within the literal words of the claim, if it is “so far changed in principle from a patented article that it performs the same or a similar function in a substantially different way.”  Id.  The purpose of the reverse doctrine of equivalents is to prevent unwarranted extension of the claims beyond a fair scope of the patentee’s invention.

                In Finjan, the software module at issue is “locked” and inoperable.  It cannot perform the function because it is locked.  Non-performance” of a function would seem to be the epitome of a “substantially different way” of performing a function.

                The reverse doctrine of equivalents has been proposed as a way to preserve the validity of a claim, as well.   Namely, “[t]he reverse doctrine of equivalents is invoked when claims are written more broadly than the disclosure warrants. The purpose of restricting the scope of such claims is not only to avoid a holding of infringement when a court deems it appropriate, but often is to preserve the validity of claims with respect to their original intended scope.”  See Texas Instruments, Inc. v. ITC, 846 F.2d 1369 (Fed. Cir. 1988).

                Thus, from an academic perspective, it would be interesting to see if a situation involving locked or inoperable code is one that could finally invoke the elusive reverse doctrine of equivalents.

You can listen to the entire oral argument in Finjan here: [Listen].

You can read the court’s full opinion in Finjan here: [Read].


Now, to replace that door handle . . . .


UPDATE September 15, 2018

Here are some more “configured to” and “capable of” opinions:

Parkervision, Inc. v. Qualcomm Inc., __ F.3d __ (Fed. Cir. 2018)

Dell Inc. v. ACCELERON, LLC, 818 F.3d 1293 (Fed. Cir. 2016)

Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d 1201 (Fed. Cir. 2014).

Nazomi Communications, Inc. v. Nokia Corporation, 739 F.3d 1339 (Fed. Cir. 2014).

UPDATE October 4, 2018

Versata Software, Inc. v. SAP America, Inc.,717 F.3d 1255, 1262-63 (Fed. Cir. 2013),

ViaTECH TECHNOLOGIES INC. v. Microsoft Corporation, No. 2017-2276 (Fed. Cir. May 23, 2018).