First published in LES Insights
A patented method is directly infringed only when the method is performed. Granting summary judgment of no direct infringement, a California court recently determined that even if the accused infringers sold products preprogrammed to perform a patented method, they cannot be direct infringers unless they perform or control the performance of at least one method step.
The Federal Circuit has long held that a patented method cannot be directly infringed by the mere sale of a product. But to what extent can the sale of a product preprogrammed to automatically perform steps of a patented method impact direct infringement? In Adaptix, Inc. v. Apple, Inc.,1 et al., the District Court for the Northern District of California applied recent Federal Circuit precedent to determine that even if the accused infringers sold products preprogrammed to perform a patented method, they cannot be direct infringers unless they perform or control the performance of at least one method step.
Adaptix, Inc. owns two patents describing methods for a wireless handset to select narrow frequency bands to transmit data. Adaptix accused Apple, Inc. and other defendants of directly infringing these methods by selling handsets preprogrammed to perform such methods.
Defendants, citing the Federal Circuit's decision in Ricoh Co., Ltd. v. Quanta Computer Inc. (Fed. Cir. 2008), argued that they could not have directly infringed the patented methods because they merely sold preprogrammed handsets and did not perform any of the method steps.
Adaptix countered that the Federal Circuit, in SiRF Technology, Inc. v ITC (Fed. Cir. 2010), found direct infringement based on the sale of accused devices preprogrammed to automatically perform certain method steps.
Defendants sought summary judgment that they did not directly infringe any asserted method claim.
The district court granted defendants' motions for summary judgment. The court determined that the fundamental question underlying defendants' motions was whether one can directly infringe a claimed method without performing even one step of the method based on the sale of a product preprogrammed to perform one or more such steps. In answering this question, the court relied on the Federal Circuit's recent decision, Ericsson, Inc. v. D-Link Systems, Inc.(Fed. Cir. 2014), which, the court noted, reconciled the seemingly contradictory holdings in Ricoh and SiRF. UnderEricsson, accused infringers must still perform at least one step of a claimed method themselves to be liable for direct infringement. The court found no genuine dispute that defendants performed no such step.
First, Adaptix cited no evidence to show any individual acting on behalf of the defendants using an accused handset to perform any claimed method. Adaptix's evidence, the court noted, that end users may have used the accused handsets to perform the claimed methods or that the defendants may have initiated the performance was insufficient to establish direct infringement.
Second, in light of Ericsson, the court distinguished the current case from SiRF. In SiRF, the Federal Circuit found direct infringement because every step in the asserted method claims was performed by SiRF using servers in its physical possession and control, except for the final step of each claim, which was automatically performed by preprogrammed software designed by SiRF. Contrarily, Adaptix in the current case presented no evidence that the defendants performed or controlled the performance of any step of the claimed methods. Under Ericsson, the court noted, the SiRF decision does not apply to cases where "all of the steps of the method [in question] are performed on the end product, which is controlled by a third party."
Strategy and Conclusion
The Adaptix decision offers guidance on the enforcement of method patents, showing that direct infringement of a patented method cannot be based solely on the sale of a product preprogrammed to perform the method. Rather, as theAdaptix court emphasized, to establish direct infringement, a plaintiff must present specific evidence showing that the alleged infringer performed or controlled all the steps of a method claim or, alternatively, that while the accused infringer performed or controlled only some steps, any step not performed or controlled was automatically performed by an accused product according to its programming.
The decision also illustrates difficulties inherent to proving direct infringement of method claims, particularly where the method steps are carried out under the control of third parties, such as end users. Thus, from the perspective of patent enforcement, it is advantageous to cover inventions with both method claims and apparatus claims, the latter of which are infringed by conduct such as making, using, or selling the apparatus.