Divided Infringement Standard Still Evolving

In the oral argument of SiRF Technology v. ITC, 2009-1262 (Fed. Cir. April 12, 2010), there was an interesting discussion of the evolving standard for divided infringement.  Despite the court’s earlier decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007) and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), one gets the impression that some of the judges feel that divided infringement is still an evolving doctrine and that there is some flexibility for de minimis involvement of an unrelated third party in a method claim.   Judge Dyk  remarks in the following sound bite: “[A]s a matter of patent policy, why shouldn’t somebody be able to draft a claim that includes as one of the steps ‘here’s all the available information’ and the last step is turning the machine on and that’s done by somebody else . . . . ”  He followed up by asking:  “Assuming that the earlier cases don’t answer this particular question, where is the appropriate place to draw the line?”  In addition, Judge Clevenger remarks that control of a third party analogous to principles of respondeat superior is one test for determining whether a third party was under the direction and control of a joint infringer, but it might not be the only test:   [Listen].

The panel was able to avoid the issue in this case because the panel determined that by virtue of its claim construction that there was no third party involvement — rather, SiRF was deemed to have performed all the limitations of the method.  The panel said:

Appellants contend that the Commission erred in concluding that SiRF directly infringes claims 1 and 2 of the ’651 patent7 and claims 1, 2, and 5 of the ’000 patent.8 The resolution of this issue depends in part on claim construction, which is an issue of law and is subject to de novo review. See Cybor Corp. v. FAS Techs., Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc).


Appellants argue that the claims are only infringed when actions are taken by SiRF’s customers and by the end users of the GPS devices; that SiRF accordingly can infringe the patents only when it is a joint infringer together with the customers and the end users; and that the requirements for joint infringement are not satisfied because SiRF does not control or direct the customers or end users. See Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318, 1329 (Fed. Cir. 2008). The Commission found joint infringement. We do not reach the question of joint infringement because we do not read the relevant claims as requiring that any of the specified actions be taken by SiRF’s customers or by the end users of the GPS devices. This is not a situation where a method claim specifies performance of a step by a third party, or in which a third party actually performs some of the designated steps, and thus control or direction of the performance of that step by the accused infringer is required.9 Rather, the method claims at issue here are drawn to actions which can be performed and are performed by a single party. As they do not require that any of the steps be performed here by the customers or the end users, and the disputed steps are not in fact performed by third parties, we conclude that SiRF directly infringes.


First, at issue are the second, “communicati[ng]” step of claim 1 of the ’651 patent and the third, “transmitting” step of the ’000 patent. The second step of claim 1 of the ’651 patent provides for “communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location.” ’651 patent col.10 ll.64-65. The third step of claim 1 of the ’000 patent provides for “transmitting the formatted data to a remote receiver.” ’000 patent col.6 l.47. Appellants argue that the performance of these steps necessarily involves actions by SiRF’s customers and by the end users of the GPS devices. They argue that in order for the data to be “communicat[ed]” or “transmit[ed]” to the GPS receiver, the data must travel first from SiRF’s server to the servers of its customers (the intermediate distributors and GPS product manufacturers). Then, SiRF’s customers must forward this data to the mobile GPS receivers, and the end users of the GPS devices must download the data from the customers’ servers.


Neither the claim language nor the patent specification requires that the communication/transmission be direct. In fact, indirect communication is specifically contemplated. See ’651 patent col.3 ll.42-48 (“The link may be a landline, or other direct communications path . . . . Alternatively, this link may have several parts . . . .”) (label numbers omitted). Therefore, we construe these limitations as encompassing “communicating, whether direct or indirect” and “transmitting, whether direct or indirect.”


With respect to infringement, under this construction it is clear that SiRF performs the step of communicating/transmitting the files to the end users’ devices because SiRF initiates the process of transmitting and communicating, and the files are actually transmitted to the end users. The entire “end-to-end service,” as SiRF’s marketing describes it, J.A. 16,206, was designed by SiRF so that the EE files would be transmitted to end-user GPS devices containing SiRF chips and software. Indeed, the EE files generated by SiRF only work in the end-user devices of those devices containing SiRF chips and SiRF software. Here, it is true that the “communicati[ng]” or “transmitting” can only occur if the customer forwards the data to the end user and the end user downloads the data. However, the actions of “forwarding” or “downloading” are not required by the claims, and, therefore, the fact that other parties perform these actions does not preclude a finding of direct infringement. By analogy, if a claim for a method of making a telephone call included the limitation: “placing a telephone call to a telephone at a second location,” the fact that the call must first be routed through a switched telephone network, and then eventually to the eventual recipient, would not prevent this claim limitation from being satisfied. Therefore, we conclude SiRF indirectly transmits or communicates the files to the GPS receivers and thereby meets these claim limitations.


Second, at issue are the third step of claim 1 of the ’651 patent, which requires “processing [the] satellite signals received at the mobile GPS receiver,” ’651 patent col.10 ll.66-67 and the fourth step of claim 1 of the ’000 patent, which requires “representing [the] formatted data in a second format supported by the remote receiver,” ’000 patent col.6 ll.48-49. With respect to the ’651 patent, the ALJ noted that the processing “occurs at the mobile GPS receiver.” Initial Determination, slip op. at 140-42. With respect to the ’000 patent, the ALJ noted that “[t]he parties are in agreement that [this limitation] is to be construed as ‘converting the data received in the first format to a second format supported by the remote receiver.’” Id. at 125-26. The parties agree that the “processing” and “representing” steps must take place in the mobile GPS device.


Appellants argue that SiRF does not perform this step because though the GPS receivers employ SiRF chips and InstantFix software, end users must actually initiate the process of downloading the EE data by connecting the device to the Internet and activating the InstantFix functionality. Then, the end user must either enable the “auto update” feature or enable the “manual update” feature in order for EE files to be transmitted to the receiver. Appellants argue that this action by an end user negates performance by SiRF of the “processing” or “representing” claim limitations.


Appellants’ argument misreads the claim limitations. There exists no method step in any of the disputed claims that requires “enabling” or “activating” the devices that perform these claim limitations. Nor is there a step which requires “downloading” the data into the GPS receiver. Appellants, in essence, ask us to read such limitations into the claims. We decline to do so. See, e.g., Burke, Inc. v. Bruno Indep. Living Aids, Inc., 183 F.3d 1334, 1340-41 (Fed. Cir. 1999). We therefore construe the “processing” and “representing” steps of the asserted claims as taking place in a GPS receiver that is enabled and ready to process data.


When properly construed, it is clear that 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 of claim 1 of the ’651 patent and claim 1 of the ’000 patent, and therefore directly infringes the asserted claims.

7 Claim 1 of the ’651 patent reads as follows:

1. A method of receiving global positioning system (GPS) satellite signals comprising:

receiving satellite ephemeris at a first location;

communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location; and

processing satellite signals received at the mobile GPS receiver using the ephemeris to reduce code and frequency uncertainty in the mobile GPS receiver to improve acquisition sensitivity of the mobile GPS receiver.


8 Claim 1 of the ’000 patent reads as follows:

1. A method of creating and distributing compact satellite orbit models comprising:

receiving satellite signals from at least one satellite and at least one receiving station;

extracting at least a portion of the satellite tracking data from said satellite signal, representing said data in a first format;

transmitting the formatted data to a remote receiver; and

at the remote receiver, representing said formatted data in a second format supported by the remote receiver.


9 For example, in Muniauction, the method at issue required actions to be taken by both a “bidder” and an “issuer.” See 532 F.3d at 1322. In BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373, 1378 (Fed. Cir. 2007), the parties “agree[d] [that] Paymentech [the accused infringer] does not perform every step of the method at issue in this case.”  



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

You can read the decision here: [Read].

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