Product claims requiring only the capability of performing a certain function are directly infringed even though the function is disabled in the accused product.

Finjan, Inc. v. Secure Computing Corp., No. 2009-1576, -1594 (Fed. Cir. Nov. 4, 2010).

The patents-at-issue are directed to “proactive scanning” technology for computer security. The alleged infringers did not dispute that the accused products contained proactive scanning technology. Rather, they asserted that the products were non-infringing because the products were “locked,” requiring a customer to purchase a separate key to unlock the proactive scanning functionality. At trial, the jury found that the patents were valid and willfully infringed. The district court denied the alleged infringer’s motions for JMOL. The alleged infringers appealed on infringement, and the patentee appealed as to future damages.

As to infringement, the Federal Circuit upheld the jury verdict as to direct infringement of the product claims, rejecting the argument that “locking” the infringing functionality precluded infringement. Because the claims recited capability, not actual operation, a finding of direct infringement was not precluded by disabling the infringing mode of operation in the accused software. The court reversed the finding of infringement of the method claims because the only evidence that alleged infringers had performed all the steps of the method was a single test performed in Germany.

The Federal Circuit rejected the appeal as to damages and upheld the jury’s award both as to the royalty base and the royalty rate. Lastly, the Federal Circuit granted the patentee’s cross-appeal because the district court awarded damages only on sales before entry of the verdict and not for those sales after the verdict and before the alleged infringers were permanently enjoined. The court remanded the case to determine the appropriate damages for this interim period because a patentee is not fully compensated if the damages award does not include future lost sales.

A copy of the opinion can be found here.