When considering infringement of system claims, the relevant definition of “use” under 35 U.S.C. § 271(a) is whether the accused infringer puts the invention into service as a whole and obtains a benefit from it; physical or direct control over each element of the system is not required.
The patentee accused the defendants of infringing the patent–in–suit with its billing systems. The patent–in–suit, titled “Billing System,” disclosed a system for collecting, processing, and delivering information from a service provider, such as a telephone company, to a customer. The defendants’ billing systems consisted of two parts: the defendants’ back office system and the front–end applications that its customers can install on their computers. The district court granted defendants’ motion for summary judgment of non-infringement because neither the defendants nor their customers could practice all of the asserted claim limitations due to the two–part system. In short, neither of them could “use” the patented system under 35 U.S.C. § 271(a). The court further granted the patentee’s motion for summary judgment that its invention was not anticipated by prior art. On cross–appeals, the Federal Circuit found errors in both rulings.
Addressing infringement, the Federal Circuit agreed with the district court that to “use” a system for purposes of infringement, a party must “put the invention into service.” In other words, it must control the system as a whole and obtain a benefit from it. However, the district court erred by further holding that such “use” requires physical or direct control over each individual element of the system. Instead, it does not matter that a user lacks physical control over the whole system; he merely needs to make the components “work for their patented purpose,” thereby “using” every element of the system and putting it into service as whole.
Here, the accused products did not “use” the system since they could not put it into service as a whole due to the required end-user element. Only customers could use the system because its use is initiated by their actions. Customers cause the system as a whole to perform specific functions, and they obtain the benefit of the result, thereby “using” the system. Without these customer–initiated actions, the system would never be put into service. Since the defendants did not directly use the system, the Federal Circuit next considered whether they could still be liable under a theory of vicarious liability. The court concluded that such a theory could not apply because it is entirely the customers’ choice whether to install and operate the software on their computers. Supplying the software to customers is not the same as using the system. Though it reached a determination about the “use” of the system, the Federal Circuit could not resolve the issue of infringement because the lower court did not consider whether the accused products satisfied the claim limitations. The infringement ruling was vacated and remanded.
A copy of the opinion can be found here.