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Patent claims serve to provide notice as to the scope of an invention described in a patent. The claims can be directed to various statutory types, such as an apparatus, article, composition, method, system, or any other patentable subject matter. For example, when the invention is a mechanical device, the claims are generally characterized as apparatus or system type claims, and detecting infringement of such claims can be as simple as finding a similar physical device in the market.

In contrast, software-related inventions can be claimed as a method, as a system that carries out software operations, or as a computer-readable medium (CRM) that contains software instructions, each of which may be infringed in different contexts. This article focuses on different standards for infringement of software patents based on whether the patent has method, system, or CRM claims.

Under 35 U.S.C. § 271(a), a party infringes a patent when it, without authority, makes, uses, offers to sell, sells, or imports the patented invention within the United States. The Federal Circuit has found that “[n]ot only will the [infringement] analysis differ for different types of infringing acts, it will also differ as the result of differences between different types of claims.” Accordingly, software patents are often subject to multifaceted infringement analyses during litigation. For example, in NTP, Inc. v. Research In Motion, Ltd., the Federal Circuit performed discrete infringement analyses for method and system claims directed to a software invention. These different standards for infringement of software claims should influence the way a software-related patent is drafted.

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Method Claims

In NTP, the Federal Circuit evaluated whether a method for integrating an electronic mail system with RF communication networks was infringed under the “use” category of § 271. Use of RIM's e-mail system for BlackBerry devices, which incorporated a relay located in Canada to route e-mails to the recipient, allegedly infringed the asserted method claims.

The Federal Circuit found that, because a portion of the method was performed by the relay located in Canada, the method was not “used” within the United States, stating that “[b]ecause a process is nothing more than the sequence of actions of which it is comprised, the use of a process necessarily involves doing or performing each of the steps recited. This is unlike use of a system as a whole, in which the components are used collectively, not individually.” Since NTP, the Federal Circuit has confirmed the reasoning that each step of a method claim of a U.S. patent must be performed within the United States to be infringed.

In performing its analysis, the court noted that Congress has expressed the view that method claims can only be infringed under the “use” category of infringement, and held that RIM had not sold, offered for sale, or imported the entirety of the method. However, the court made sure to leave open the possibility that a method might be infringed under other categories of infringement outlined in 35 U.S.C. § 271(a) (e.g., making, offering to sell, importing) or under different factual circumstances.

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System Claims

Though the Federal Circuit found that the method claims were not infringed in NTP, the court reached a different result with regard to the asserted system claims. The Federal Circuit found that, even though the foreign relay at issue was necessary for other components of the system to function properly, the system as a whole was nonetheless “used” in the United States. The court found that the situs of a system is not the place where the entire system resides, but is rather “the place where control of the system is exercised and beneficial use of the system is obtained.”

Because BlackBerry owners used their devices to send and receive emails within the United States, the system was used within the United States for purposes of § 271. So, unlike method claims, which must be performed in their entirety in the United States to be “used,” system claims of a U.S. patent may still be infringed where one or more components exist outside the boundaries of the United States.

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Computer-Readable Medium Claims

CRM claims combine the functionality of method claims with the tangibility of apparatus claims: they recite operations typically provided in a method while being directed to a physical memory having instructions that are executable to cause such operations. Accordingly, whereas it is uncertain whether a method can be “sold,” “offered for sale,” or “imported” for purposes of infringement under § 271, the Federal Circuit has held that CRMs can be.

For example, in Finjan v. Secure Computing Corp., the Federal Circuit affirmed that the defendant infringed the plaintiff's CRM claims because the defendant had “sold” an infringing software product. And while each step of a method must actually be performed in the United States to be infringed, the court in Finjan did not require that the instructions stored in the infringing CRM actually be executed. The court reasoned that, “to infringe a claim that recites capability and not actual operation, an accused device 'need only be capable of operating' in the described mode.” Thus, CRM claims can operate like apparatus claims for purposes of an infringement analysis.

In sum, the varying standards for infringement of software-related patent claims have practical implications that should affect strategy when drafting a patent, particularly when drafting a set of claims. Because patent applicants are allowed three independent claims before paying a fee, practitioners drafting a software-related patent should craft claim sets that cover independent method, system, and CRM claims directed to the same invention to take advantage of the different standards of infringement. Further, patent practitioners should be aware of which devices or multi-component systems are likely to infringe a patent, and mold the figures, written description, and claims in a way that allows the standards for infringement to work for, and not against, the client's needs.

Joseph A. Herndon is a partner with McDonnell Boehnen Hulbert & Berghoff LLP and serves as Chair of the firm's Software & Business Methods Practice Group. Mr. Herndon has experience in all areas of patent and trademark law practice. Mr. Herndon's prosecution experience includes all phases of U.S. and foreign patent and trademark prosecution, client counseling, due diligence, and opinion work regarding validity, infringement, and enforceability of patents. His litigation experience includes all phases of trial work, from pleadings to verdict. Adnan “Eddie” M. Obissi is an associate with McDonnell Boehnen Hulbert & Berghoff LLP. Mr. Obissi's practice is focused on intellectual property matters, including patent litigation, prosecution, and client counseling, particularly in the electrical and software areas.