Thursday, May 04, 2017
Method use v. Apparatus use
http://www.lexology.com/library/detail.aspx?g=df5ab67a-9322-44bd-bf2a-db71cbb77169
http://www.fr.com/files/Uploads/attachments/muenchen/presentation8.pdf
Method/Process v. System/Apparatus
Infringing use of a patented method or process is fundamentally different from infringing use of a patented system or device. NTP, Inc., 418 F.3d at 1317 (citations omitted).
1) Product/Device/Apparatus claim: tangible items
- “[A]pparatus claims cover what a device is, not what a device does.” Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009).
2) Method/Process claim: a series of act or steps (In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002))
Two Federal Circuit opinions reinforce that use infringement of method or process patents is
more limited in scope than use infringement of a system or apparatus patent.
1) Joy Technologies, Inc. v. Flakt, Inc.: when the patent is on a process, “It does not give the
[patent owner] a monopoly in the appliances by which the process is operated.”21
2) NTP, Inc. v. Research in Motion, Ltd.: “[A] process cannot be used ‘within’ the
United States as required by section 271(a) unless each of the steps is performed within this
country.”24
Two recent Federal Circuit cases clarify rules relating to use infringement of a system claim.
1) NTP: use of the system as a whole occurred when the defendant’s customers sent and received messages in the United States.28 Unlike method claims, courts analyze the invention as a whole to determine where the claimed system as a whole is put into service, and do not focus on the situs of use of each claimed element within the claimed invention.
2) Centillion Data Systems, LLC v. Qwest Communications Int’l, Inc.:
Relying on NTP, the court decided that use of a system required the infringing party to put
the invention into service, i.e., control the system as a whole and obtain benefit from it.32 The
court held that on-demand operation was use of the system as a matter of law.33
http://www.fr.com/files/Uploads/attachments/muenchen/presentation8.pdf
Method/Process v. System/Apparatus
Infringing use of a patented method or process is fundamentally different from infringing use of a patented system or device. NTP, Inc., 418 F.3d at 1317 (citations omitted).
1) Product/Device/Apparatus claim: tangible items
- “[A]pparatus claims cover what a device is, not what a device does.” Paragon Solutions, LLC v. Timex Corp., 566 F.3d 1075, 1090 (Fed. Cir. 2009).
2) Method/Process claim: a series of act or steps (In re Kollar, 286 F.3d 1326, 1332 (Fed. Cir. 2002))
Two Federal Circuit opinions reinforce that use infringement of method or process patents is
more limited in scope than use infringement of a system or apparatus patent.
1) Joy Technologies, Inc. v. Flakt, Inc.: when the patent is on a process, “It does not give the
[patent owner] a monopoly in the appliances by which the process is operated.”21
Our holding in Standard Havens, first, reflects the previously discussed principle that a method claim is not directly infringed by the sale of an apparatus even though it is capable of performing only the patented method. The sale of the apparatus is not a sale of the method. A method claim is directly infringed only by one practicing the patented method.
- Joy Technologies, Inc. v. Flakt, Inc, 6 F.3d 770, 774-75 (Fed. Cir. 1993)
Joy Technologies, Inc. v. Flakt, Inc, 6 F.3d 770, 775 (Fed. Cir. 1993) (“Second, Standard Havens holds that the act of selling equipment which will not be used so as to directly infringe a method claim cannot constitute one of the dependent types of infringement, that is, either contributory infringement or inducement of infringement. Joy seeks to distinguish Standard Havens because the intended use of the equipment in that case was outside the United States while here the use will be beyond the term of the patent.”)
2) NTP, Inc. v. Research in Motion, Ltd.: “[A] process cannot be used ‘within’ the
United States as required by section 271(a) unless each of the steps is performed within this
country.”24
Two recent Federal Circuit cases clarify rules relating to use infringement of a system claim.
1) NTP: use of the system as a whole occurred when the defendant’s customers sent and received messages in the United States.28 Unlike method claims, courts analyze the invention as a whole to determine where the claimed system as a whole is put into service, and do not focus on the situs of use of each claimed element within the claimed invention.
2) Centillion Data Systems, LLC v. Qwest Communications Int’l, Inc.:
Relying on NTP, the court decided that use of a system required the infringing party to put
the invention into service, i.e., control the system as a whole and obtain benefit from it.32 The
court held that on-demand operation was use of the system as a matter of law.33
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