Federal Circuit Addresses Standards to Establish an Infringing “Use” of a Device Claim
By Michael Bonella // September 15, 2017
In Intellectual Ventures I & II LLC v. Motorola Mobility LLC, No. 2016-1795 (September 13, 2017 Fed. Cir.), the Federal Circuit addressed the seldom-raised issue of what constitutes an infringing use of a device or system claim under 35 U.S.C. § 271(a). The Federal Circuit rejected Intellectual Ventures argument that in order to show an infringing “use” of a device claim it is sufficient to show that the alleged direct infringer benefited “from the system as a whole.” Id. at 15. Rather, the Federal Circuit held that an alleged direct infringer must “obtain benefit from each and every element of the claimed system.” Id. at 15-16.
Typically, a device or system claim is alleged to be directly infringed by the selling or making of the claimed device or system. However, if a claim is drafted to include more than one component, it is often not possible to allege infringement by “sale” or “making” because only one of the components is sold or made. This sometimes occurs with software or electrical processing claims where two actors together, but not individually, practice a claim, but neither actor sold or made the entire claimed invention. Accordingly, where there are two components each operated by a different actor that are communicating electronically, it has been alleged that one of the actors is “using” the claimed system. In Centillion Data Sys., LLC v. Qwest Comms. Int’l, Inc., 631 F.3d 1279 (Fed. Cir. 2011), the Federal Circuit addressed infringement of this type of claim and held that Qwest’s customers infringed a system claim by “use” where Qwest and Qwest’s customers each performed certain claim limitations. According to the Federal Circuit, Qwest’s customers actions constituted a single-actor “using” the claimed invention because a Qwest’s customer “puts the system as a whole into service, i.e., controls the system and obtains benefit from it.”
IV’s asserted claim 41 of U.S. Patent No. 7,810,144 involved more than one component and actor because it contained limitations to a “communications device” and an “authentication device.” Intellectual Ventures I & II, No, 2016-1795 at 4. As it appeared that Motorola Mobility and its customers did not “sell” or “make” the claimed system (i.e., all the devices claimed), IV asserted direct infringement by “use” of the claimed invention. Id. at 13. At trial, the jury found that Motorola Mobility’s customers directly infringed claim 41 by using cellular phones and Motorola directly infringed by using the invention when it tested cellular phones. Id. at 13. The District Court rejected Motorola Mobility’s post-trial judgment as a matter of law that Motorola Mobility did not directly infringe. Id. at 6.
On appeal, Motorola Mobility contended that there was not substantial evidence to support the jury finding that any alleged user used one claim limitation. Id. at 14. In response, IV argued that Centillion only requires that an infringer “benefit from the ‘system as a whole,’ such that a benefit derived from any claimed component of the claimed system would suffice to demonstrate an infringing ‘use.’” Id. at 15. The Federal Circuit rejected IV’s argument explaining that to “use” or put something into service” (i.e., use) under 35 U.S.C. § 271(a) means “to control and benefit” from the device. Id. The Federal Circuit held that “to control and benefit” from the system requires that each claim element must be used and a single actor must “control (even if indirectly) and benefit from each claimed component.” Id. at 15. As the Federal Circuit explained, “direct or indirect control required ‘is the ability to place the system as a whole into service.” Under these standards, the Federal Circuit reversed the denial of Motorola’s motion for judgment as a matter of law of noninfringement because there was insubstantial evidence to show that Mobility and its customers practiced one claim limitation.
Thus, in IV v. Motorola Mobility, the Federal Circuit reaffirmed the all-elements rule. However, a single actor can infringe a system claim by “use” even if another performs a claim limitation if the actor controls and benefits from another’s performance of that claim limitation.