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Standing in my garage a few weeks back, I was kicking myself for having just locked my keys inside the house.\u00a0\u00a0 <\/span>I had the flu and wanted to get back inside to get some rest.\u00a0 <\/span>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 \u201ccapable\u201d of being used as a door \u2013 rather it is pretty much just a wall.\u00a0 <\/span>As I took a sledgehammer to the door handle another 20 minutes later, I was convinced that this was true.<\/span><\/p>\n The recent case of Finjan, Inc. v. Secure Computing Corp. et al.<\/span>, 2009-1576 (Fed Cir. Nov. 4, 2010) presented a similar issue.\u00a0 <\/span>In that case, the court dealt with the issue of whether a \u201clocked\u201d module of a software program satisfied part of a patent claim for purposes of patent infringement.\u00a0 <\/span>The \u201clocked\u201d module in the accused product was not operable unless a key was purchased to unlock the module.\u00a0 <\/span>The Federal Circuit as shown below characterized the issue as whether the module was \u201ccapable\u201d of operation.\u00a0 <\/span>The panel concluded that even though the pertinent modules were \u201clocked\u201d the apparatus and Beauregard claims were still infringed.<\/span><\/p>\n The Finjan<\/span> case raises several interesting issues.\u00a0 <\/span>First, in view of Judge Moore\u2019s comments during the oral argument of eSPEED, Inc. et al. v. Brokertec USA, et al.<\/span>, 480 F.3d 1129 (Fed. Cir. 2007), does it sound like she would agree with this decision?\u00a0 <\/span>Second, does the court\u2019s 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 \u00a7101 and 35 USC \u00a7112?\u00a0 <\/span>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?\u00a0 <\/span><\/span><\/span><\/p>\n The Finjan Opinion<\/span><\/span><\/span><\/p>\n It will first be helpful to have some background on the Finjan<\/span> opinion.\u00a0 <\/span>The accused infringer\u2019s software program was sold with part of the software in an inoperable state.\u00a0 <\/span>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.\u00a0 <\/span>After the user purchased the key and unlocked the module, the module could be used.\u00a0 <\/span>The panel recognized this fact.\u00a0 <\/span>And, the accused products clearly were evaluated for infringement in their locked state.\u00a0 <\/span>See<\/span> Finjan<\/span>, slip opinion at page 9 (\u201cDefendants claim that our court has held that \u2018locked\u2019 or disabled products cannot infringe apparatus claims.\u00a0 <\/span>Their reliance on our precedent is misplaced\u201d).\u00a0 <\/span>Similarly, in the oral argument of Finjan<\/span>, Judge Linn acknowledged the argument that if software was locked then its steps could not be performed. [Listen<\/a>].<\/span><\/p>\n The accused infringer argued that an inoperable software module cannot infringe.\u00a0 <\/span>However, the panel declined to accept that argument.\u00a0 <\/span>Namely, this is what the panel had to say in regard to the \u201cinoperability\u201d issue in its opinion (the claims at issue can be viewed here [Link<\/a>]) :<\/span><\/p>\n While the argument is not waived, we disagree with the merits of Defendants\u2019 theory. Defendants claim that our court has held that \u201clocked\u201d or disabled products cannot infringe apparatus claims. Their reliance on our precedent is misplaced. <\/span><\/span><\/p>\n In Southwest Software, Inc. v. Harlequin Inc.<\/span>, 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 \u201cincluded a manual step which avoided the automatic selection feature of the patented invention even though the code for automatic selection remained in place.\u201d 226 F.3d 1280, 1291 (Fed. Cir. 2000). Defendants interpret Southwest<\/span> 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 \u201csystem\u201d and \u201cstorage medium\u201d claims, which do not require the performance of any method steps. See<\/span> NTP, Inc. v. Research in Motion, Ltd.<\/span>, 418 F.3d 1282, 1318 (Fed. Cir. 2005) (\u201c[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 . . . .\u201d). <\/span><\/span><\/p>\n Defendants also rely on ACCO Brands<\/span>, where we overturned a jury verdict of inducement because the patentee failed to \u201ceither point to specific instances of direct infringement or show that the accused device necessarily infringes the patent in suit.\u201d 501 F.3d at 1313. The asserted apparatus claims covered locking devices with pins in a specific configuration. The accused device could \u201cbe operated in either of two modes,\u201d one infringing and one not. Id.<\/span> 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<\/span>, an accused device does not infringe if it \u201ccan be used at any given time in a non-infringing manner.\u201d Defs.\u2019 Principal Br. 33 (citing 501 F.3d at 1313). However, in ACCO Brands<\/span>, the claim language required the locking device\u2019s pin to extend through a slot in a specific configuration. 501 F.3d at 1310. Here, by contrast, Finjan\u2019s apparatus claims do not require that the proactive scanning software be configured in a particular way to infringe\u2014only that it be programmed for performing the claimed steps. For example, claim 32 of the \u2019194 patent covers \u201c[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 . . . .\u201d <\/span><\/span><\/p>\n Defendants insist that the asserted claims require actual operability. The asserted \u201csystem\u201d claims include \u201cengines,\u201d such as a \u201clogical engine\u201d (\u2019194 patent claim 32), a \u201ccommunications engine\u201d (\u2019780 patent claim 9), and a \u201clinking engine\u201d (\u2019822 patent claim 12). Defendants cite the testimony of Finjan\u2019s expert Dr. Giovanni Vigna, who stated at trial that an engine \u201chas an active task to perform,\u201d and is an \u201cactive component.\u201d Transcript at 410:6-7, 22. Seizing upon the word \u201cactive,\u201d Defendants argue that the source code must be \u201cenabled\u201d to infringe. However, neither the claim language nor Vigna\u2019s testimony supports this contention. <\/span><\/span><\/p>\n As we have cautioned, \u201cin every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred.\u201d Fantasy Sports Props. v. Sportsline.com, Inc.<\/span>, 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 \u201cneed only be capable of operating\u201d in the described mode. Intel Corp. v. U.S. Int\u2019l Trade Comm\u2019n<\/span>, 946 F.2d 821, 832 (Fed. Cir. 1991). Thus, depending on the claims, \u201can 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.\u201d Hilgraeve Corp. v. Symantec Corp.<\/span>, 265 F.3d 1336, 1343 (Fed. Cir. 2001); see<\/span> also<\/span> Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc.<\/span>, 555 F.3d 984, 994 (Fed. Cir. 2009) (noting that the \u201creasonably capable\u201d test applies \u201conly to claim language that specifies that the claim is drawn to capability\u201d). <\/span><\/span><\/p>\n In this case, Finjan\u2019s non-method claims describe capabilities without requiring that any software components be \u201cactive\u201d or \u201cenabled.\u201d The system claims recite software components with specific purposes: \u201ca logical engine for preventing execution\u201d (\u2019194 patent claim 32), \u201ca communications engine for obtaining a Downloadable\u201d (\u2019780 patent claim 9), or \u201ca linking engine . . . for forming a sandbox package\u201d (\u2019822 patent claim 12) (emphases added). The storage medium claims similarly cover capability. Claim 65 of the \u2019194 patent recites a \u201ccomputer-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 . . . .\u201d This language does not require that the program code be \u201cactive,\u201d only that it be written \u201cfor causing\u201d a server (\u2019194 patent claim 65) or a computer (\u2019780 patent claim 18) to perform certain steps. Vigna\u2019s infringement analysis did not contradict this language. He defined an \u201cengine\u201d as \u201csome kind of component whose task is to operate some kind of analysis or transformation.\u201d 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 \u201cliterally present\u201d on all accused products. Oral Arg. at 1:53-58, available at http:\/\/oralarguments.cafc.uscourts.gov\/mp3\/2009-1576.mp3. Secure\u2019s Senior Vice President Michael Gallagher testified that even if a software module was turned off, \u201c[t]he module is resident in the binary source code that is in the product.\u201d Transcript at 722:19-22. Thus, it is undisputed that software for performing the claimed functions existed in the products when sold\u2014in the same way that an automobile engine for propulsion exists in a car even when the car is turned off. 2 <\/span><\/span><\/p>\n We addressed a similar infringement scenario in Fantasy Sports<\/span>, where we held that software for playing fantasy football could infringe a claim to a \u201ccomputer for playing football.\u201d 287 F.3d at 1118. The defendants who sold the software argued that because their product was a \u201cmodifiable software tool,\u201d direct infringement occurred only when users configured it to play games. Id. at 1117. Rejecting this contention, we explained that \u201calthough 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.\u201d Id. at 1118. Infringement occurred because the code \u201cwas written in such a way as to enable a user of that software to utilize the function . . . without having to modify that code.\u201d Id. That analysis applies here. The code for proactive scanning was \u201calready present\u201d in Defendants\u2019 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 \u201cactivate the functions programmed\u201d by purchasing keys does not detract from or somehow nullify the existence of the claimed structure in the accused software. Therefore, the jury\u2019s infringement verdict on the system and media claims was based on a \u201clegally sufficient evidentiary basis\u201d and consistent with the \u201cweight of the evidence.\u201d Pediatrix, 602 F.3d at 545-46 & n.9. That portion of the verdict is affirmed.<\/span><\/span><\/p>\n Finjan, slip opinion at pages 9-13.<\/span><\/span><\/p>\n \u00a0<\/span><\/span><\/span><\/p>\n Judge Moore\u2019s Comments During Espeed Oral Argument<\/span><\/span><\/span><\/p>\n \u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 <\/span>In the case of eSPEED, Inc. et al. v. Brokertec USA, et al.<\/span>, 480 F.3d 1129 (Fed. Cir. 2007), a panel that included Judge Moore and Judge Linn (the author of the Finjan<\/span> opinion) addressed a similar issue during oral argument \u2013 although the panel\u2019s written opinion ultimately did not address the issue.\u00a0 <\/span>In eSPEED<\/span>, 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 \u2013 essentially trying to apply the doctrine that \u201cthat which infringes if later, anticipates if earlier.\u201d\u00a0 <\/span>Listen to the following sound bites from that oral argument to gain some context and to hear Judge Moore\u2019s comments on the line of \u201clatent code\u201d cases: [Listen<\/a>], [Listen<\/a>], [Listen<\/a>], and [Listen<\/a>].\u00a0 <\/span><\/span><\/span><\/p>\n It strikes me from listening to Judge Moore\u2019s comments that she viewed what she referred to as the \u201clatent code\u201d cases as requiring software code to be \u201ccallable\u201d before it could serve as prior art.\u00a0 <\/span>That would similarly suggest that \u201clatent code\u201d must be callable in order to infringe in circumstances like the Finjan<\/span> case.\u00a0 <\/span>Therefore, it will be interesting to see how Judge Moore treats the issue in the future or if the Finjan<\/span> case is subjected to en banc<\/em> review.<\/span><\/p>\n \u00a0<\/span>\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0\u00a0 <\/span>Judge Moore referred to the \u201clatent code\u201d cases in the eSPEED oral argument; and, the opinion in Finjan<\/span> refers to some prior cases as well.\u00a0 <\/span>I\u2019ve tried to compile some of the pertinent statements from some of those cases in the table below.<\/span><\/span><\/p>\n Case Citation<\/span><\/p>\n \u00a0<\/span><\/p>\n Issue<\/span><\/p>\n \u00a0<\/span><\/p>\n Background Facts<\/span><\/p>\n<\/td>\n Quote<\/span><\/p>\n<\/td>\n<\/tr>\n Intel Corp. v. ITC<\/span>, 946 F.2d 821 (Fed. Cir. 1991) <\/span><\/span><\/p>\n \u00a0<\/span><\/p>\n Review of ITC\u2019s finding of infringement under the Doctrine of Equivalents <\/span><\/p>\n \u00a0<\/span><\/p>\n \u00a0<\/span>EPROMs sold to customers without any intent that they be used in \u201cpage mode operation.\u201d\u00a0 <\/span>Nevertheless, the EPROMs were capable of operating in \u201cpage mode operation.\u201d<\/span><\/span><\/p>\n<\/td>\n \u201c<\/span>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 <\/em>of performing page mode<\/span><\/p>\n 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 \u2014 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 <\/span>Fromberg, Inc. v. Thornhill, <\/span><\/em>315 F.2d 407, 415, 137 USPQ 84, 89 (5th Cir. 1963), <\/span>in support of its argument. As noted by<\/span><\/p>\n Intel, there is no intent element to direct <\/em>infringement. See <\/em>35 U.S.C. \u00a7 271(b) and (c). Fromberg <\/em>deals with induced and contributory infringement and is therefore inapposite. Because the language of claim 1 refers to “programmable <\/em>selection means” and states “whereby when <\/em>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.<\/span>\u201d<\/span><\/p>\n<\/td>\n<\/tr>\n High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc.<\/span>, 49 F. 3d 1551 (Fed. Cir. 1995)<\/span><\/span><\/p>\n \u00a0<\/span><\/p>\n Review of district court\u2019s finding of likelihood of infringement for purposes of a <\/span><\/p>\n preliminary injunction<\/span><\/p>\n \u00a0<\/span><\/p>\n \u00a0<\/span><\/p>\n Camera was sold with set screws securing the camera in place so that it could not be \u201crotatably coupled\u201d during normal operation.<\/span><\/p>\n<\/td>\n 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 <\/em><\/span>Hap Corp. v. Heyman Mfg. Co., <\/span><\/em>311 F.2d 839, 843, 135 USPQ 285, 288 (1st<\/sup> Cir. 1962) <\/span>(“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, <\/em>373 U.S. 903, 83 S.Ct. 1290, 10 L.Ed.2d 198 (1963).<\/span><\/p>\n \u00a0<\/span><\/p>\n 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<\/span><\/p>\n operation, or whether any dentist had actually operated the AcuCam in that fashion. Instead, relying on this court’s decision in <\/span>Intel Corp. v. United States Int’l Trade Comm’n, <\/span><\/em>946 F.2d 821, 20 USPQ2d 1161<\/span><\/p>\n (Fed. Cir. 1991), <\/span>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 <\/em>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.<\/span><\/p>\n \u00a0<\/span><\/em><\/p>\n Intel <\/span><\/em>does not support so broad a holding. All that was required by the limitation at issue in Intel <\/em>was that the claimed invention, an integrated circuit memory device, was “programmable” to operate in a certain<\/span><\/p>\n manner. The accused device, although not specifically designed or sold to operate in that <\/span>*1556 <\/span>manner, could be programmed to do so; that is, it was “programmable” to operate in the designated mode. The<\/span><\/p>\n claim at issue in Intel <\/em>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. <\/span><\/p>\n \u00a0<\/span><\/p>\n 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<\/span><\/p>\n 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<\/span><\/p>\n patent. See <\/em><\/span>Paper Converting Mach. Co. v. Magna-Graphics Corp., <\/span><\/em>745 F.2d 11, 19, 223 USPQ 591, 597 (Fed. Cir. 1984) <\/span>(components of a machine held to infringe when components are ready for assembly and serve “no useful non-infringing purpose”); <\/span>Hansen v. Siebring, <\/span><\/em>231 F.Supp. 634, 644, 142 USPQ 465, 472 (N.D.Iowa), <\/span>aff’d, <\/span><\/em>346 F.2d 474 (8th<\/sup> Cir.), <\/span>cert. denied, <\/span><\/em>382 U.S. 943, 86 S.Ct. 400, 15 L.Ed.2d 352<\/span><\/p>\n (1965)<\/span>. 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.<\/span><\/p>\n \u00a0<\/span><\/p>\n 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<\/span><\/p>\n 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 <\/span>offered no evidence that any user of the AcuCam had loosened or removed the set screws prior to or during actual use. <\/span><\/p>\n \u00a0<\/span><\/p>\n 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.<\/span><\/p>\n<\/td>\n<\/tr>\n Telemac Cellular Corp. v. Topp Telecom<\/span>, 247 F.3d 1316 (Fed. Cir. 2001)<\/span><\/span><\/p>\n \u00a0<\/span><\/p>\n Review of district court\u2019s granting of summary judment of literal infringement <\/span><\/p>\n \u00a0<\/span><\/p>\n \u00a0<\/span><\/p>\n Due to a restriction built into the software program stored in the telephone\u2019s memory, a user is prevented from using the software to place international calls.<\/span><\/p>\n \u00a0<\/span><\/p>\n<\/td>\n 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.<\/span><\/span><\/p>\n \u00a0<\/span><\/p>\n 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. <\/span><\/p>\n \u00a0<\/span><\/p>\n 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. <\/span>High Tech Med.<\/span><\/em><\/p>\n Instrumentation v. New Image Indus., Inc., <\/span><\/em>49 F.3d 1551, 1556, 33 USPQ2d 2005, 2008-09 (Fed. Cir. 1995)<\/span>. In this case, due to a restriction built into the software program stored in the telephone’s<\/span><\/p>\n 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<\/span><\/p>\n the accused device. The district court correctly concluded that Telemac’s allegations of literal infringement must fail.<\/span><\/p>\n<\/td>\n<\/tr>\n Hilgraeve Corp. v. Symantec Corp.<\/span>, 265 F.3d 1336 (Fed. Cir. 2001)<\/span><\/span><\/p>\n \u00a0<\/span><\/p>\n \u00a0<\/span><\/p>\n\n\n
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