When a preamble in a patent method claim has steps that define the environment in which the patented method takes place or that describe capabilities that a device practicing the method must have, a ruling of infringement is justified even if the alleged infringer did not perform those steps.
The patentee initiated litigation against its competitor after licensing negotiations for the patented method and system failed. The district court construed the asserted claims to require that the accused infringer practice each of the steps, including those in the preamble.
The district court granted summary judgment of non-infringement for both direct and induced infringement. Its ruling on direct infringement was based on the fact that the defendant did not perform some of the steps in the preamble. The district court’s ruling on induced infringement was based on the patentee’s failure to raise inducement as a theory of infringement in its infringement contentions and the absence of evidence as to the defendant’s state of mind. The Federal Circuit reversed in part, vacated in part, and remanded.
The Federal Circuit found that the preambles in the asserted claims merely define the environment in which the accused infringer must act or describe capabilities that an accused device must have. Thus, the court found that the defendant could infringe even without performing the steps in the preamble and reversed the court’s summary judgment ruling on the direct infringement issue.
The Federal Circuit also found that there was sufficient evidence to create a genuine issue of material fact as to whether the defendant intended to induce infringement, and that the defendant’s sale and assistance in installing software which performed the claimed method could possibly be sufficient circumstantial evidence of direct infringement. Accordingly, the court vacated the court’s summary judgment ruling of the inducement issue to consider the sufficiency of the patentee’s evidence on direct infringement and address whether summary judgment is warranted solely based on the patentee’s untimeliness in asserting induced infringement.
A copy of the opinion can be found here.