In Intellectual Ventures, the Federal Circuit reversed a finding of infringement of a system claim by the District Court of Delaware. The Federal Circuit found that the patent was not infringed because no single user used and obtained benefit of each element of the claimed system.
Intellectual Ventures had sued Motorola in the U.S. District Court for the District of Delaware, alleging infringement of two patents directed to an apparatus for the electronic transfer of computer files between two or more computers or computing devices. Intellectual Ventures argued that users of Motorola’s cellular telephones infringed the patent by sending certain MMS messages. The claim at issue recited a) a first communications device to send a file, b) a second communications device to receive the file, and c) an authenticating device configured to “generate a delivery report that indicates a delivery event and a time of the delivery event.” The jury found Motorola liable for infringement, and the court denied Motorola’s request for judgment as a matter of law. Motorola appealed.
Direct infringement under the Patent Act requires proof that the alleged infringer “used” the claimed system. Where a claimed system contains multiple components, the alleged infringer must control and benefit from each claimed component, although they do not have to directly operate all such components.
The Federal Circuit reversed the finding of infringement because no single phone user controlled any authenticating device or received any delivery reports from any authenticating device. Rather, systems that could be equated with the recited authenticating device were under the control of cellular telephone service providers that did not forward any delivery reports to users of the respective cellular telephone services. Because no single user controlled and benefitted from each element of the claimed system, there could be neither direct nor indirect infringement of the claim.
Key Takeaway: Direct infringement of a system claim requires use or control of each element of the system claim by a single user. Patent claims reciting systems should be drafted such that a single user would control or benefit from each element of the claimed system.