divided patent infringement and inducement: protecting ip rights

Divided Patent Infringement

and Inducement: Protecting IP Rights Strategies for Drafting and Prosecuting Claims and Allocating Liability

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TUESDAY, OCTOBER 30, 2012

Presenting a live 90-minute webinar with interactive Q&A

Thomas L. Irving, Partner, Finnegan Henderson Farabow Garrett & Dunner, Washington, D.C.

Brian A. Tollefson, Member, Rothwell Figg Ernst & Manbeck, Washington, D.C.

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Divided Infringement – Allocation of Liability & Litigation Issues

© 2012 Rothwell Figg

October 30, 2012

Presented by Brian Tollefson

© 2012 Rothwell Figg 5

I. Introduction – The Law Before Akamai en banc

A. Direct Joint Infringement

B. Indirect Induced Infringement

II. Court Treatment

A. Akamai and McKesson Federal Circuit en banc decision Aug. 31, 2012

B. Centillion Data Systems and Uniloc USA

C. Post-Akamai cases

III. Strategies for Protecting IP Rights

A. Patent Prosecution

B. Patent Claim Drafting Considerations

C. Assessing Risk of Partnerships to Allocate Potential Liability

D. Litigation Issues

October 29, 2012




II. Court Treatment









October 29, 2012 © 2012 Rothwell Figg 6

Divided Infringement

• Also called “split infringement” or “joint infringement”

• Combined actions of multiple parties (as compared with single party satisfying all elements of the claim)

• A method for indicating channel quality comprising:

receiving a signal; (step performed in the mobile station by subscriber)

computing a channel quality indicator (CQI) value …; (step performed in the mobile station by subscriber)

transmitting the CQI value; (step performed in the mobile station by subscriber)

receiving the CQI value …. (step performed in a base station by service provider/network operator)



• 35 U.S.C. § 271(a) – “Direct Infringement”

– Patent is infringed by one who “without authority

makes, uses, offers to sell, or sells … [the] patented

invention, within the United States, or imports into the

United States … [the] patented invention during the

term of the patent therefore ….”

• 35 U.S.C. § 271(b) – “Induced Infringement”

– “Whoever actively induces infringement of a patent

shall be liable as an infringer.”



• Direct patent infringement generally requires a single actor to

practice every element of a patent claim.

• Indirect infringement, (i.e. contributory and induced

infringement), also required a showing of underlying direct

infringement.

– Akamai en banc holds that the direct infringement underlying

induced infringement does not require a single actor.

• While most patent claims can be infringed by making, using,

selling, or offering to sell the patented device, method claims

can only be infringed by using the patented method. » NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282, 1317-18

(Fed. Cir. 2005).


Important Federal Circuit Cases

• On Demand Machine Corp. v. Ingram Industries, Inc., 442 F.3d 1331 (Fed. Cir. 2006)

• BMC Resources v. Paymentech, 498 F.3d 1373, 1381 (Fed. Cir. 2007)

• Muniauction, Inc. v. Thomson Corp., 532 F.3d 1318 (Fed. Cir. 2008)

• Golden Hour Data Sys. v. emsCharts, Inc., 614 F.3d 1367 (Fed. Cir. 2010)

• Centillion Data Systems, LLC. v Qwest Communications International, Inc., 631 F.3d 1279 (Fed. Cir. 2011).

• SiRF Technology, Inc. v. International Trade Commission, 601 F.3d 1319 (Fed. Cir. 2010)


Divided Infringement – On Demand

• CAFC (J. Newman) endorsed, as an accurate statement

of the law, a jury instruction that read:

– “It is not necessary for the acts that constitute

infringement to be performed by one person or entity.

When infringement results from the participation and

combined action(s) of more than one person or entity,

they are all joint infringers and jointly liable for patent

infringement. Infringement of a patented process or

method cannot be avoided by having another perform

one step of the process or method.”


Divided Infringement – BMC Resources

• Overruled in-part by Akamai en banc

• The parties conceded that the accused infringer did not perform all the steps of the claims. At issue was the proper standard for proving direct infringement under a joint infringement theory.

• CAFC (J. Rader) held that, “the law imposes vicarious liability on a party for the acts of another in circumstances showing that the liable party controlled the conduct of the acting party.”

• Defined proper standard as “direction and control.”

• “A party cannot avoid infringement, however, simply by contracting out steps of a patented process to another entity. In those cases, the party in control would be liable for direct infringement. It would be unfair indeed for the mastermind in such situations to escape liability.”


Divided Infringement - Muniauction

• Not (explicitly) overruled by Akamai en banc

• Joint Infringement Theory: Claims directed to electronic methods for

conducting original issuer auctions of financial instruments; “inputting

step” performed by bidder, other steps performed by issuer, the

relationship of parties should constitute direct infringement.

• CAFC (J. Gajarsa), applying BMC and not On Demand, held that for

combined actions of multiple parties, where no single party performs

each step:

– Infringement only if one party exercises “control or direction” over the

entire process such that every step is attributable to the controlling party.

– “Control or direction” standard satisfied where direct infringer would be

held “vicariously liable” for acts committed by another party that are

required to complete performance of the claimed method.


Divided Infringement - Golden Hour

• Accused infringers formed a strategic partnership, enabling their programs to work together and sold the programs as one product.

• District Court (ED Tex.) granted JMOL for both system and method claims, holding that one party must control details of the independent contractor work: – Independent contractor cannot perform the work as it chooses

– Evidence insufficient to show that Agreement imposed duties or responsibilities granting direction or control, and Agreement did not create agency, partnership or joint venture

– Party did not relinquish control over how its program was written, only gave the right to provide the program.

– Defendant was not accused of being the mastermind.

• CAFC (J. Dyk) affirmed joint infringement requirements with regard to both method and system claims.


According to Golden Hour, What is NOT Joint Infringement

“Making information available to the [other] party,

prompting the [other] party,

instructing the [other] party, or

facilitating or arrange for the [other] party’s

involvement in the alleged infringement is not

sufficient [to find direction of control].”


Divided Infringement – Centillion

• Patent claiming an electronic billing system comprising four elements, three elements on a “back end” system maintained by service provider and fourth element on a “front-end” system maintained by an end user.

• In Qwest’s systems, end users may (but do not have to) use a feature employing technology that Centillion contended is the fourth, front-end element, while service providers’ systems allegedly practice the first three elements.

• District Court (SD Ind.) held Defendant Qwest did not practice the end-user element and did not exercise direction or control over end users creating liability for vicarious infringement.

• CAFC (J. Moore) held “control” to require only the ability to put a system as a whole into service, not physical or direct control over all elements and held the location of “use” is where the system is put into service and the beneficial use of the system is obtained.

• Remanded to determine indirect infringement.


• Claims for GPS system requiring receiving satellite data, communicating and/or extracting data, and processing data at remote receiver.

• CAFC (J. Dyk) found that no joint infringement theory is necessary because SiRF performed all the steps of the method claims. – Found that SiRF’s argument related to unclaimed

steps (i.e., the user’s activity) was irrelevant.

– Found that SiRF’s software and devices dictated the performance of the claimed steps.

Divided Infringement – SiRF


Who is performing a step?

• This is often the most important issue

• “The use of a claimed system under section 271(a) is the place at which the system as a whole is put into service, i.e., the place where control of the system is exercised and beneficial use of the system obtained.” NTP, Inc. v. Research In Motion, Ltd.

• For a method step, it is often an issue of claim construction (e.g., “enabling,” “displaying,” etc.)


Summary

• Previously, BMC, Muniauction, Golden Hour, Akamai line of cases appeared to have solidly established the standard of an agency relationship for evaluating divided infringement.

• Still, divided infringement does not always have to be proved:

– “Use” can be established with system claims (Centillion)

– Performance of some steps may be performed indirectly (SiRF)

• Akamai en banc decision steers clear of direct infringement.





II. Court Treatment










Allocating Liability Risks in Partnership

• Joint Infringement

– Direction and Control is still the standard

• Law of Inducement has changed

– (1) knew of the patent;

– (2) induced performance of the steps of the

method; and

– (3) those steps were actually performed.



• Considerations

– Whether to perform a search

• Clear products first?

• Knowledge of patents versus opinion defense.

– Operate independently / arms length transactions

• Opinions of Counsel

– Non-Infringement & Invalidity positions

– Willful infringement considerations


Allocating Liability Risks: Strategies

• Strategy 1 – Perform a coordinated

clearance search – Primary goal: avoid infringement.

– Caution: Maintain an Arm’s Length Relationship.

• Limit detail of coordination

– A coordinated clearance search can be evidence of

no intent to infringe, but can it be contorted to appear

as evidence of acting in concert to infringe?



• Strategy 2 – Operate independently – Parties share the same goal, but don’t discuss how to

reach that goal.

– Perform independent clearance searches and each

party ensures that they don’t practice all elements of

any claim identified in the searches.

– “We need to get from A to C. We will get from A to B

and not tell you how. You get from B to C and don’t

tell us how.”



• Strategy 3 – Avoid Knowledge of Patents

– Without knowledge, there is no specific intent

to infringe.

– Once you are sued, you have notice and

knowledge. • Then perform an analysis for validity and infringement.

• Stop activity once aware, but this does not avoid the strict

liability of direct infringement.

– “Willful Blindness” concern of Global-Tech.



• Language in Akamai en banc – “The party who actually participates in performing the

infringing method is, if anything, more culpable than

one who does not perform any steps.”

» Maj. Op. at p. 17 (emphasis added)

– Thus, a party that induces infringement only provides

a system or method may be treated less harshly than

one who performs claimed elements of a method.


Allocating Liability Risks: Opinions of Counsel

• New in the AIA, 35 U.S.C. § 298 Advice of counsel:

– The failure of an infringer to obtain the advice of counsel with

respect to any allegedly infringed patent, or the failure of the

infringer to present such advice to the court or jury, may not be

used to prove that the accused infringer willfully infringed the

patent or that the infringer intended to induce infringement of the

patent.

– i.e. Not getting an opinion cannot be used as a negative

inference for willfulness or inducement at trial.

• Thus, conversely, the affirmative obtaining of advice of

counsel should be evidence to prove the accused

infringer did not intend to induce infringement.



• Value of a Non-Infringement Opinion

– If knowledge is specific intent to induce acts

that constitute patent infringement, then a

good faith belief of non-infringement of the

claims should provide a defense by

eliminating the knowledge requirement.

– Willful Infringement Considerations



• Value of an Invalidity Opinion – An invalid claim cannot be infringed.

• Viskase Corp. v. American Nat'l Can Co., 261 F.3d 1316, 1323 (Fed.

Cir. 2001)

• Richdel, Inc. v. Sunspool Corp., 714 F.2d 1573, 1580 (Fed. Cir.

1983)

– Then, similarly, a good faith belief of invalidity of

claims should provide a defense by eliminating the

knowledge requirement.

• One should remain wary of producing

opinions and the related risks of discovery.


Litigation Strategies

• Direct Infringement

– Pleading Joint Infringement

– Motions to Dismiss Joint Infringement

• Induced Infringement

– Pleading Induced Infringement

– Motions to Dismiss Induced Infringement

• Early Motions for Summary Judgment


Litigation – Pleading Joint Infringement

• Make sure the Complaint fits Form 18.

– In re Bill of Lading, 681 F.3d 1323 (Fed. Cir. 2012)

• Joint Infringement liability will attach if the accused

infringer directs or controls other actors to perform those

steps that the primary actor does not himself perform.

– Plead that “one party exercises ‘control or direction’ over the

entire process such that every step is attributable to the

controlling party, i.e., the ‘mastermind’.”

– Again note that Muniacution was not explicitly overruled by

Akamai en banc.

– This issue as discussed in BMC Resources was not under

review in Akamai en banc.


Litigation – Pleading Joint Infringement

• Plead that each and every element is practiced.

– A single entity practicing each and every element is

now the simple case, if it exists.

• As needed, in order to account for each and every element: – Evaluate if “use” of system claims can be established

as in Centillion.

– Evaluate if performance of some steps are performed indirectly but still attributable to a direct infringer as in SiRF.


Litigation – Early Motions to Dismiss

• Motions to Dismiss Extend the Pleadings – Increase cost to Plaintiff.

– Defendant does not have to Answer immediately.

• More time to prepare a response.

• Timing can be advantageous in some jurisdictions, e.g. N.D. Ill.

where patent disclosure is keyed on the Final Pleading and not

the Rule 26(f) conference.

– More time to discuss settlement.

– More time to seek transfer of venue.

– More opportunity to pursue post-grant procedures, such

as inter partes review.


Litigation – Motions to Dismiss Joint Infringement Claims

• Does the Complaint fit Form 18?

• Challenge that the Plaintiff does not allege that

one party exercises ‘control or direction’ over the

entire process such that every step is attributable

to the controlling party, i.e., the ‘mastermind.

• Challenge that performance of each and every

element has not been pled.

– Can you distinguish from Centillion or SiRF?


Litigation – Pleading Induced Infringement

• Twombly/Iqbal regime requires that a plaintiff

plead, “sufficient factual matter, accepted as

true, to state a claim that is plausible on its face.”

– More than mere formulaic recitation of elements and

conclusory legal statements.

• Plead that each and every element is practiced.

– Induced infringement effectively requires an

underlying direct infringement, but not a direct

infringer.

– J. Newman’s dissent in Akamai en banc points out the

inconsistency of this concept.



• Knowledge, Inducement, & Actual Performance:

– Plead that the accused infringer acted with knowledge

that the induced acts constituted patent infringement. • See Akamai en banc, Maj. Op. at 14., citing Global-Tech v. SEB,

131 S.Ct. 2060 (2011).

– Evidence of inducement should be more than a bare

allegation. • Example situations of inducement are provided by Akamai

(Dependant Limelight performing at least 1 step) and McKesson

(Defendant Epic not performing any step, but providing a system).

– Again, each and every element of a claim must be

practiced.



• Properly plead Direct Infringement first, then add

Indirect Infringement pleadings later.

– Avoid motions to dismiss thin indirect infringement

pleadings.

– Potentially receive further information in responses to

support indirect infringement claims.

• If a party is inducing infringement, almost by

definition that action is willful (or can be

construed as such to a jury), so seek treble

damages for willful infringement.


Litigation – Motions to Dismiss Induced Infringement Claims

• Attack the Knowledge prong.

– Assert that defendant did not know the induced acts

constituted patent infringement.

• More than mere knowledge or notice of the patent.

• Opinions of Counsel can provide protection here.

– If the Defendant did not know of the patent before the

lawsuit, then there could be no specific intent to induce.

• Moving forward, the Defense of the Case may provide cover.

• Challenge whether there is actual performance.


Litigation – Early Motion for Summary Judgment

• Generally, convince the Judge that the present

case is appropriate for SJ.

– Simplify the case, provide one claim that needs to be

construed, and only for narrow application.

• Is there any uncontroverted evidence that no

one party performs all elements, and that there

is no direction or control?

– Then file for SJ regarding any direct infringement

claims.


Post-Akamai en banc Cases

• Technology Patents LLC v. T-Mobile (UK) LTD., No.

2011-1581 (Fed. Cir. Oct. 17, 2012) – Claims only require action by originating actor using system, thus infringement

should be decided under Centillion and does not touch divided infringement of

Akamai en banc.

• Aeritas, LLC v. Alaska Air Group, Inc., Civ. No. 11-967-

SLR (D. Del. Sept. 28, 2012) – Follows Muniauction regarding joint infringement “control or direction” standard,

held that Plaintiff did not satisfy Twombly-Iqbal pleading requirements.

• Centillion v. Qwest, Civ. No. 04-0073-LJM-DKL (S.D. Ind.

October 15, 2012). – Construction of claims found no direct infringement, thus also no indirect

infringement, and mens rea of defendant was not addressed.


THANK YOU!

© 2012 Rothwell Figg

Brian Tollefson

[email protected]

(202) 783-6040

These materials are public information and have been prepared solely

for educational and entertainment purposes to contribute to the

understanding of U.S. intellectual property law. These materials

reflect only the personal views of the presenters and are not

individualized legal advice and do not reflect the views of FINNEGAN

or ROTHWELL. It is understood that each case is fact-specific, and

that the appropriate solution in any case will vary. Therefore, these

materials may or may not be relevant to any particular situation.

Thus, FINNEGAN, ROTHWELL, and the presenters cannot be bound

either philosophically or as representatives of their various present

and future clients to the comments expressed in these materials. The

presentation of these materials does not establish any form of

attorney-client relationship with FINNEGAN, ROTHWELL, or the

presenters. While every attempt was made to insure that these

materials are accurate, errors or omissions may be contained therein,

for which any liability is disclaimed.

42

DISCLAIMER

DIVIDED INFRINGEMENT:

COURT TREATMENT

43

Presented by

Tom Irving

A REMINDER…

44

35 U.S.C. 271

a) Except as otherwise provided in this title, whoever without authority

makes, uses, offers to sell, or sells any patented invention, within the

United States, or imports into the United States any patented invention

during the term of the patent therefor, infringes the patent.

b) Whoever actively induces infringement of a patent shall be liable as an

infringer.

c) Whoever offers to sell or sells within the United States or imports into

the United States a component of a patented [invention] constituting a

material part of the invention, knowing the same to be especially made

or especially adapted for use in an infringement of such patent, and

not a staple article or commodity of commerce suitable for substantial

noninfringing use, shall be liable as a contributory infringer.

Akamai Technologies, Inc. v. Limelight Networks, Inc.

and McKesson Technologies, Inc. v. Epic Systems

Corp., 692 F.3d 1301 (Fed. Cir. 2012)(en banc)

6-5

Majority opinion filed per curiam

Majority: RADER, LOURIE, BRYSON, MOORE, REYNA, WALLACH

Dissenting opinion filed by Judge NEWMAN.

Dissenting opinion filed by Judge LINN, in which Judges

DYK, PROST, and O’MALLEY join.

45

Joint Infringement

45

Akamai: Competitor performed part of claimed method and

competitor’s customers completed it.

Claimed method: placing content on a set of replicated servers and

modifying the content.

Limelight’s accused process places some content on its servers, and

then instructs its customers on the steps needed to modify.

McKesson: Competitor did not perform any part of claimed

method; multiple customers of competitor completed steps, but

none performed all steps.

Claimed method of communication between healthcare providers and

their patients.

Steps of the patent are divided between patients, who initiate

communications using the competitor’s software, and healthcare

providers, who perform the remainder of the steps.

46

Joint Infringement

46

Akamai and McKesson (con’t)

Questions:

Whether a defendant may be held liable for induced

infringement if the defendant has performed some of the

steps of a claimed method and has induced other parties

to commit the remaining steps (as in Akamai)?

Whether a defendant may be held liable for induced

infringement if the defendant has induced other parties

to collectively perform all the steps of the claimed

method, but no single party has performed all of the

steps itself (as in McKesson)?

47

Joint Infringement

47


Majority

“Recent precedents of this court have interpreted section

271(b) to mean that unless the accused infringer directs or

controls the actions of the party or parties that are

performing the claimed steps, the patentee has no remedy,

even though the patentee’s rights are plainly being violated

by the actors’ joint conduct. We now conclude that this

interpretation of section 271(b) is wrong as a matter of

statutory construction, precedent, and sound patent

policy.”

“Nothing in the text indicates that the term “infringement” in

section 271(b) is limited to “infringement” by a single entity.”

48

Previous Interpretation of

§271(b) is Wrong

48


Majority

“In doing so, we reconsider and overrule the 2007 decision of

[BMC Resources] in which we held that in order for a party to

be liable for induced infringement, some other single entity

must be liable for direct infringement. …To be clear, we hold

that all the steps of a claimed method must be performed in

order to find induced infringement, but that it is not

necessary to prove that all the steps were committed by a

single entity.”

“If an entity has induced conduct that infringes a patent,

there is no justification for immunizing the inducer from

liability simply because no single party commits all of the

components of the appropriative act.”

49

BMC Overruled

49


Majority:

“Because the reasoning of our decision today is not

predicated on the doctrine of direct infringement,

we have no occasion at this time to revisit any of

those principles regarding the law of divided

infringement as it applies to liability for direct

infringement under 35 U.S.C. § 271(a).”

50

Decide Don’t Have to Decide


50

Akamai and McKesson outcomes

Both cases reversed and remanded.

McKesson: “Epic can be held liable for inducing infringement if it

can be shown that (1) it knew of McKesson’s patent, (2) it induced

the performance of the steps of the method claimed in the patent,

and (3) those steps were performed.”

Akamai: “Limelight would be liable for inducing infringement if the

patentee could show that (1) Limelight knew of Akamai’s patent, (2)

it performed all but one of the steps of the method claimed in the

patent, (3) it induced the content providers to perform the final

step of the claimed method, and (4) the content providers in fact

performed that final step.”

51

Reversed and Remanded

51

Akamai and McKesson, Judge LINN, dissenting

“The majority’s approach is contrary to both the Patent Act and to the Supreme

Court’s longstanding precedent that “if there is no direct infringement of a

patent there can be no contributory infringement.”

“The majority opinion is rooted in its conception of what Congress ought to

have done rather than what it did.”

“direct infringement is required to support infringement under § 271(b) or §

271(c) and properly exists only where one party performs each and every claim

limitation or is vicariously liable for the acts of others in completing any steps

of a method claim, such as when one party directs or controls another in a

principal-agent relationship or like contractual relationship, or participates in a

joint enterprise to practice each and every limitation of the claim.”

Would affirm non-infringement in both Akamai and McKesson.

52

LINN Dissent

52

Akamai and McKesson, Judge NEWMAN, dissenting

“A scant majority” made “dramatic changes in the law of

infringement.”

New: “only an inducer can be liable for divided infringement, on loose

criteria for inducement”

No requirement for direct infringement.

“a significant minority of the en banc court continues to favor the

‘single-entity rule,’ whereby divided infringement is not actionable at

all unless all of the participants are in a contract or agency relationship

that is directed or controlled by a single ‘mastermind.’”

“The only issue for which these cases were taken en banc, the only

issue on which briefing was solicited from the parties and amici curiae,

was the conflict in precedent arising from the single-entity rule of BMC

Resources and Muniauction.”

53

NEWMAN Dissent

53

Direct Infringement By Single Party

Triggering Operation Of A Claimed System

Centillion Data Sys., L.L.C. v. Qwest

Commc'ns Int'l, Inc., 631 F.3d 1279 (Fed. Cir.

2011), reh’g denied (April 25, 2011)

DC: summary judgment of no infringement

because, under NTP and BMC, no single party

either practiced all of the limitations of the

asserted claims or controlled another party

doing so.

54

Direct Infringement By Single Party

Triggering Operation Of A Claimed System

Centillion (con’t)

FC: Vacate and remand

“By causing the system as a whole to perform this processing and obtaining

the benefit of the result, the customer has “used” the system under

§271(a). It makes no difference that the back-end processing is physically

possessed by Qwest. The customer is a single “user” of the system and

because there is a single user, there is no need for the vicarious liability

analysis from BMC or Cross Medical.”

Qwest not vicariously liable because does not control customers’ use.

the user of a system who triggers operation of that system is an infringer of

a claim to that system even though some elements of the system are

performed by different parties.

55

No Infringement By Single Party

56

Centillion, on remand

2012 WL 4505851

No direct infringement by Qwest

No direct infringement by customer

No indirect infringement by Qwest

Joint Tortfeasors?

May Depend on Claim Construction

• SiRF Technology, Inc. v. International Trade Com'n,

601 F.3d 1319 (Fed. Cir. 2010)

• Claim: 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 ….

• Infringed only when actions are taken by SiRF's customers and

by the end users of the GPS devices?

• Commission: joint infringement.

57

Joint Tortfeasors?


• SiRF (con’t)

• Federal Circuit: SiRF directly infringes because SiRF performs all steps of the claim.

• no steps required by customers or end users.

• method can be performed and are performed by a single party – “Neither the claim language nor the patent specification requires that the communication/ transmission be direct.”

• “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.”

58

Joint Tortfeasors?


• SiRF (con’t)

• FC (con’t)

• although “communicati[ng]” or ‘transmittin[g]” “can only

occur if the customer forwards the data to the end user and

the end user downloads the data. … 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.”

• “When properly construed, it is clear that SiRF infringes

…Once the GPS receiver is enabled and ready to process the

data, only SiRF's actions are involved in “processing” or

“representing” the data.”

59

DIVIDED INFRINGEMENT:

STRATEGIES FOR

PROTECTING IP RIGHTS

60

Patent Claim Drafting

Considerations

Consider who will infringe the claims and how

infringement will be proven.

Try to draft claims that will be directly and

literally infringed by competitors.


literally infringed by one actor.

61

Patent Claim Drafting

Considerations

Consider where infringement will occur to

avoid extra-territoriality.


literally infringed in the U.S. by competitors.


literally infringed in the U.S. by one actor.

62

Examples

• SIRF did it right: avoid overly limitative language.

• Claim: 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 ….

• “Neither the claim language nor the patent

specification requires that the communication/

transmission be direct.”

63

Examples

• SIRF (con’t)

• although “communicati[ng]” or ‘transmittin[g]”

“can only occur if the customer forwards the data

to the end user and the end user downloads the

data. … 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.”

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Examples

Per Centillion, draft system claims

The user of a system who triggers operation

of that system is an infringer of a claim to

that system even though some elements of

the system are performed by different

parties.

65

Examples

Akamai Claimed method: placing content on a

set of replicated servers and modifying the

content.

Systems approach:

A system comprising a set of replicated servers,

wherein the content thereof is capable of being

modified ?????

Remember Centillion: user of a system who

triggers operation of the system is an infringer

66

Examples

McKesson Claimed method: Claimed method of

communication between healthcare providers and their

patients.

Steps of the patent are divided between patients, who

initiate communications using the competitor’s

software, and healthcare providers, who perform the

remainder of the steps.

So, how about: A communication system comprising

software that allows for communication between

healthcare providers and their patients ?????

67

Examples

A method comprising reacting A with B to form

C and then reacting C with D to form E.

What if A with B to form C is performed in

Italy?

Does 35 USC §271(g) apply?

68

Examples

[w]hoever without authority imports into the United

States or offers to sell, sells or uses within the

United States a product which is made by a process

patented in the United States shall be liable as an

infringer, if the importation, offer to sell, sale, or

use of the product occurs during the term of such

process patent. . . . A product which is made by a

patented process will, for purposes of this title, not

be considered to be so made after—

1. it is materially changed by subsequent processes; or

2. it becomes a trivial and nonessential component of

another product.

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Examples

Consider:

A method for reacting D with C to form E, with

production of C being enabled in the specification.

A method for reacting A with B to form C, with

subsequent production of E being enabled in the

specification.

A method of forming E or C, with appropriate

enablement in the specification.

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Patent Prosecution

Make efforts to maintain originally drafted

claims meeting goals of previous slides.

Make efforts to present new and amended

claims meeting goals of previous slides and

having written description support.

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Presented by

Tom Irving

202.408.4082

[email protected]

divided patent infringement and inducement: protecting ip rights

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