{"id":2286,"date":"2010-05-03T18:00:07","date_gmt":"2010-05-04T00:00:07","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=2286"},"modified":"2010-05-03T18:00:07","modified_gmt":"2010-05-04T00:00:07","slug":"divided-infringement-standard-still-evolving","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=2286","title":{"rendered":"Divided Infringement Standard Still Evolving"},"content":{"rendered":"

In the oral argument of\u00a0SiRF Technology v. ITC<\/span>, 2009-1262 (Fed. Cir. April 12, 2010), there was an interesting discussion of the evolving standard\u00a0for divided infringement.\u00a0 Despite the court’s earlier decisions in BMC Resources, Inc. v. Paymentech, L.P.<\/span>, 498 F.3d 1373 (Fed. Cir. 2007)\u00a0and Muniauction, Inc. v. Thomson Corp.<\/span>, 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\u00a0there is some flexibility for de minimis involvement of an unrelated third party\u00a0in a method claim.\u00a0\u00a0 Judge Dyk\u00a0 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\u00a0the steps ‘here’s all the available information’ and the last step is turning the machine on and that’s done by somebody else . . . .\u00a0”\u00a0 He followed up by asking:\u00a0 “Assuming that the earlier cases don’t answer this particular\u00a0question, where is the appropriate place to draw the line?”\u00a0\u00a0In addition, Judge Clevenger remarks that control of a third party\u00a0analogous to principles of respondeat superior is\u00a0one\u00a0test for determining whether a third party was under the direction and\u00a0control\u00a0of\u00a0a joint\u00a0infringer,\u00a0but it might not\u00a0be the only\u00a0test:\u00a0\u00a0 [Listen<\/a>].<\/p>\n

The panel was able to avoid the issue in this case because\u00a0the panel\u00a0determined that by virtue of its claim construction\u00a0that there was no third party involvement — rather, SiRF was deemed to have\u00a0performed all the\u00a0limitations of the method.\u00a0 The panel said:<\/p>\n

Appellants contend that the Commission erred in concluding that SiRF directly infringes claims 1 and 2 of the \u2019651 patent7<\/sup> and claims 1, 2, and 5 of the \u2019000 patent.8<\/sup> 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<\/span> Cybor Corp. v. FAS Techs.<\/span>, Inc., 138 F.3d 1448, 1456 (Fed. Cir. 1998) (en banc). <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Appellants argue that the claims are only infringed when actions are taken by SiRF\u2019s 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<\/span> Muniauction, Inc. v. Thomson Corp.<\/span>, 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\u2019s 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<\/sup> 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. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

First, at issue are the second, \u201ccommunicati[ng]\u201d step of claim 1 of the \u2019651 patent and the third, \u201ctransmitting\u201d step of the \u2019000 patent. The second step of claim 1 of the \u2019651 patent provides for \u201ccommunication [sic] the satellite ephemeris to a mobile GPS receiver at a second location.\u201d \u2019651 patent col.10 ll.64-65. The third step of claim 1 of the \u2019000 patent provides for \u201ctransmitting the formatted data to a remote receiver.\u201d \u2019000 patent col.6 l.47. Appellants argue that the performance of these steps necessarily involves actions by SiRF\u2019s customers and by the end users of the GPS devices. They argue that in order for the data to be \u201ccommunicat[ed]\u201d or \u201ctransmit[ed]\u201d to the GPS receiver, the data must travel first from SiRF\u2019s server to the servers of its customers (the intermediate distributors and GPS product manufacturers). Then, SiRF\u2019s 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\u2019 servers. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Neither the claim language nor the patent specification requires that the communication\/transmission be direct. In fact, indirect communication is specifically contemplated. See<\/span> \u2019651 patent col.3 ll.42-48 (\u201cThe link may be a landline, or other direct communications path . . . . Alternatively, this link may have several parts . . . .\u201d) (label numbers omitted). Therefore, we construe these limitations as encompassing \u201ccommunicating, whether direct or indirect\u201d and \u201ctransmitting, whether direct or indirect.\u201d <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

With respect to infringement, under this construction it is clear that SiRF performs the step of communicating\/transmitting the files to the end users\u2019 devices because SiRF initiates the process of transmitting and communicating, and the files are actually transmitted to the end users. The entire \u201cend-to-end service,\u201d as SiRF\u2019s 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 \u201ccommunicati[ng]\u201d or \u201ctransmitting\u201d can only occur if the customer forwards the data to the end user and the end user downloads the data. However, the actions of \u201cforwarding\u201d or \u201cdownloading\u201d 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: \u201cplacing a telephone call to a telephone at a second location,\u201d 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. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Second, at issue are the third step of claim 1 of the \u2019651 patent, which requires \u201cprocessing [the] satellite signals received at the mobile GPS receiver,\u201d \u2019651 patent col.10 ll.66-67 and the fourth step of claim 1 of the \u2019000 patent, which requires \u201crepresenting [the] formatted data in a second format supported by the remote receiver,\u201d \u2019000 patent col.6 ll.48-49. With respect to the \u2019651 patent, the ALJ noted that the processing \u201coccurs at the mobile GPS receiver.\u201d Initial Determination<\/span>, slip op. at 140-42. With respect to the \u2019000 patent, the ALJ noted that \u201c[t]he parties are in agreement that [this limitation] is to be construed as \u2018converting the data received in the first format to a second format supported by the remote receiver.\u2019\u201d Id.<\/span> at 125-26. The parties agree that the \u201cprocessing\u201d and \u201crepresenting\u201d steps must take place in the mobile GPS device. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

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 \u201cauto update\u201d feature or enable the \u201cmanual update\u201d 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 \u201cprocessing\u201d or \u201crepresenting\u201d claim limitations. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

Appellants\u2019 argument misreads the claim limitations. There exists no method step in any of the disputed claims that requires \u201cenabling\u201d or \u201cactivating\u201d the devices that perform these claim limitations. Nor is there a step which requires \u201cdownloading\u201d the data into the GPS receiver. Appellants, in essence, ask us to read such limitations into the claims. We decline to do so. See<\/span>, e.g.<\/span>, Burke, Inc. v. Bruno Indep. Living Aids, Inc.<\/span>, 183 F.3d 1334, 1340-41 (Fed. Cir. 1999). We therefore construe the \u201cprocessing\u201d and \u201crepresenting\u201d steps of the asserted claims as taking place in a GPS receiver that is enabled and ready to process data. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

When properly construed, it is clear that SiRF infringes as its devices and software dictate the performance of the \u201cprocessing\u201d and \u201crepresenting\u201d steps. Once the technology is enabled, SiRF\u2019s 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\u2019s 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\u2019s software or the functionality of the SiRFstarIII chip. Once the GPS receiver is enabled and ready to process the data, only SiRF\u2019s actions are involved in \u201cprocessing\u201d or \u201crepresenting\u201d the data. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

\n

SiRF performs all of the claim limitations of claim 1 of the \u2019651 patent and claim 1 of the \u2019000 patent, and therefore directly infringes the asserted claims.<\/span><\/span><\/p>\n<\/div>\n

7<\/span><\/sup> <\/span>Claim 1 of the \u2019651 patent reads as follows: <\/span><\/span><\/p>\n

1. A method of receiving global positioning system (GPS) satellite signals comprising: <\/span><\/span><\/p>\n

receiving satellite ephemeris at a first location; <\/span><\/span><\/p>\n

communication [sic] the satellite ephemeris to a mobile GPS receiver at a second location; and <\/span><\/span><\/p>\n

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. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/sup><\/p>\n

8<\/span><\/sup> <\/span>Claim 1 of the \u2019000 patent reads as follows: <\/span><\/span><\/p>\n

1. A method of creating and distributing compact satellite orbit models comprising: <\/span><\/span><\/p>\n

receiving satellite signals from at least one satellite and at least one receiving station; <\/span><\/span><\/p>\n

extracting at least a portion of the satellite tracking data from said satellite signal, representing said data in a first format; <\/span><\/span><\/p>\n

transmitting the formatted data to a remote receiver; and <\/span><\/span><\/p>\n

at the remote receiver, representing said formatted data in a second format supported by the remote receiver. <\/span><\/span><\/p>\n

\u00a0<\/span><\/span><\/p>\n

9<\/span><\/sup> <\/span>For example, in Muniauction<\/span>, the method at issue required actions to be taken by both a \u201cbidder\u201d and an \u201cissuer.\u201d See <\/span>532 F.3d at 1322. In BMC Resources, Inc. v. Paymentech, L.P.<\/span>, 498 F.3d 1373, 1378 (Fed. Cir. 2007), the parties \u201cagree[d] [that] Paymentech [the accused infringer] does not perform every step of the method at issue in this case.\u201d <\/span>\u00a0<\/span><\/span><\/span><\/p>\n<\/blockquote>\n

\u00a0<\/span><\/span><\/p>\n

\u00a0<\/p>\n

You can listen to the entire oral argument here: [Listen<\/a>].<\/p>\n

You can read the decision here: [Read<\/a>].<\/p>\n","protected":false},"excerpt":{"rendered":"

In the oral argument of\u00a0SiRF Technology v. ITC, 2009-1262 (Fed. Cir. April 12, 2010), there was an interesting discussion of the evolving standard\u00a0for divided infringement.\u00a0 Despite the court’s earlier decisions in BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir. 2007)\u00a0and Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008), one […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[11,1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2286"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=2286"}],"version-history":[{"count":15,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2286\/revisions"}],"predecessor-version":[{"id":2302,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/2286\/revisions\/2302"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=2286"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=2286"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=2286"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}