Federal Circuit Addresses Infringement of Non-Method Claims that Recite Components Capable of Performing Method Steps
Finjan v. Secure Computing (11/4/10)By: Inna Dahlin
_____________________________________________________________
What This Means to You
- An accused device may be found not to infringe a non-method claim that requires a modification (e.g., activation) of a component.
- The same device may not infringe a method claim that requires the function if the device does not perform the function when used.
-
Patent applications relating to methods should include non-method claims that recite components capable of performing one or more of the method functions – for example “ a component for performing function X”.
_____________________________________________________________
Overview
In Finjan, Inc. v. Secure Computing Corporation, the Federal Circuit addressed a situation involving a computer-readable storage claim reciting software components not required to be “activated” or “enabled”. The court found the potential for infringement even when an accused product is only capable of performing the claimed functionality. The court also reiterated a well-known rule that, to infringe a method claim, all steps of the claimed method need to be practiced.
Case Background
Finjan sued three defendants for infringement of three U.S. patents. At the district court level, a jury found the defendants infringed all claims of the asserted patents, and the court awarded enhanced damages to Finjan. The Federal Circuit affirmed the verdict of infringement of system and computer-readable storage medium claims, but concluded the defendants did not infringe the method claims.
Decision Analysis
The defendants argued that the non-method claims of the asserted patents were not infringed because, while the accused products included software modules providing functionality of the claims, such software modules were “locked” in the products. Customers who bought the products were required to also buy keys to activate each of the “locked” modules. The defendants’ position was that, to find infringement of the non-method claims, evidence was required that the customers actually purchased the keys to activate the “locked” modules that were originally disabled in the accused product as sold.
The Federal Circuit disagreed and reasoned that all that was required for finding infringement of the non-method claims of the asserted patents was that the accused products were “reasonably capable” of satisfying the claim limitations. The Federal Circuit concluded that the presence of software modules providing functionality of the claims in the accused products was sufficient for the finding of infringement of the claims.
However, the Federal Circuit reversed the verdict of infringement on the asserted method claims under the established rule that, to infringe a method claim, all steps of the claimed method need to be practiced.
Takeaways
This case emphasizes the importance of drafting, along with method claims, non-method claims that may potentially be successfully asserted against infringing products that merely include components capable of satisfying the claim limitations.
When a non-method claim recites storing components for performing certain functionality, and does not require that the recited components be modified in some way to be activated, no evidence of actual operation of the accused product may be required to find infringement. For example, a product that stores software code capable of satisfying the claim limitations may infringe the claims even when the product is simply sitting on a shelf.
Lastly, remember that method claims can be harder to enforce because they may require certain functionalities to be performed for infringement to be found.
