Instruction manuals teaching the steps of a claimed method patent in isolation were recently held to be insufficient evidence of direct infringement to support a claim for inducing infringement. E-Pass Technologies, Inc. v. 3COM Corp., Case No. 06-1356 (Fed. Cir. Jan. 12, 2007). The plaintiff, E-Pass, sued various defendants for inducing infringement of a method claim directed to providing a method and device for substituting a single, electronic multifunction card for multiple credit cards. The defendants included makers of personal digital assistant (PDA) products including the PalmPilot®. Granting summary judgment of noninfringement, the district court held that EPass failed to adduce evidence that any of the defendants or their customers had directly infringed by practicing all the steps of the claimed method. Hence, E-Pass could not prove liability for induced infringement.

Affirming summary judgment of noninfringement, the Federal Circuit agreed that excerpts from product manuals for the accused devices were insufficient to establish direct infringement. First, none of the excerpts E-Pass relied on taught each step of the claimed method together. Nor did they taught each step of the claimed method practicing the steps in the sequential order required by the method claim. Further, the PDA devices could be used for a variety of purposes and in a variety of noninfringing ways, a fact the court relied on to distinguish Moleculon Research Corp. v. CBS, Inc., 793 F.2d 1261 (Fed. Cir. 1986), which held that the distributor of a Rubik’s Cube-like puzzle induced infringement of a method claim on the protocol for solving such a puzzle by disseminating instruction sheets with the puzzle solution. Thus, the court held that it was “too speculative a leap to conclude that any customer actually performed the claimed method.”