The Court of Appeals for the Federal Circuit (the “Federal Circuit”) upheld a jury verdict of patent infringement and the 50% enhanced damages award for willful infringement of computer system claims and “computer-readable storage medium” claims which store program code BUT reversed the trial court’s finding of infringement on computer method claims. The decision shows the better practice of applying for and obtaining (a) computer method claims; (b) computer system claims and (c) computer program claims stored on computer readable medium. Typically, these three sets of claims use substantially the same claim language or claim concepts but cover different types of operations which may be employed by the defendant. The presentation of three sets of similar claims significantly increases the government filing fee cost of computer program patent applications about three-fold (some filing fees may exceed $3,000) but provides the patentee with important advantages in the event of a years-later patent infringement suit.
In Finjan, Inc. v. Secure Computing Corp., Case No. 2009-1576 (Fed. Cir. Nov. 4, 2010) (available here), the appeals court affirmed infringement of apparatus claims but reversed the lower court’s infringement decision on Finjan’s computer program method claims. Since the jury found that defendant Secure willfully infringed, the enhanced damage award to Finjan, the winning patentee, was preserved.
The Finjan patents included “computer-based method” claims, corresponding “system” claims and “computer readable storage medium claims.” The Court’s explanation of computer storage medium claims is instructive.
“The storage medium claims similarly cover capability. Claim 65 of the ’194 patent recites a ‘computer-readable storage medium storing program code for causing a server that serves as a gateway to a client to perform the steps of: receiving . . . ; comparing . . . ; and preventing execution . . . .’ This language does not require that the program code be ‘active,’ only that it be written ‘for causing’ a server (’194 patent claim 65) or a computer (’780 patent claim 18) to perform certain steps.” Finjan, slip opn. 11. As many practitioners know, the computer-readable storage medium claims track the method claims except for the preamble.
As for the computer system claims, the Court stated:
Finjan’s apparatus claims do not require that the proactive scanning software be configured in a particular way to infringe—only that it be programmed for performing the claimed steps. For example, claim 32 of the ’194 patent covers ‘[a] system for execution by a server that serves as
a gateway to a client, the system comprising: a security policy; an interface . . . ; a comparator . . . ; and a logical engine . . . .’ Defendants insist that the asserted claims require actual operability. The asserted ‘system’ claims include ‘engines,’ such as a ‘logical engine’ (’194 patent claim
32), a ‘communications engine’ (’780 patent claim 9), and a ‘linking engine’ (’822 patent claim 12). Defendants cite the testimony of Finjan’s expert Dr. Giovanni Vigna, who stated at trial that an engine ‘has an active task to perform,’ and is an ‘active component.’ Seizing upon the word ‘active,’ Defendants argue that the source code must be ‘enabled’ to infringe. However, neither the claim language nor Vigna’s testimony supports this contention. As we have cautioned, ‘in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred.’ Fantasy Sports Props. v. Sportsline.com, Inc., 287 F.3d 1108, 1118 (Fed. Cir. 2002). Accordingly, we have held that, to infringe a claim that recites capability and not actual operation, an accused device ‘need only be capable of operating’ in the described mode. Intel Corp. v. U.S. Int’l Trade Comm’n, 946 F.2d 821, 832 (Fed. Cir. 1991). Thus, depending on the claims, ‘an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of noninfringing modes of operation.’ Hilgraeve Corp. v. Symantec Corp., 265 F.3d 1336, 1343 (Fed. Cir. 2001); see also Ball Aerosol & Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d 984, 994 (Fed. Cir. 2009) (noting that the ‘reasonably capable’ test applies ‘only to claim language that specifies that the claim is drawn to capability’).” Finjan, slip opn. 10 -11 (cites to transcript omitted).
Defendants argued that because the accused computer programs were locked and not operable until the customers purchased one or more software keys to unlock one or more of the accused software modules, defendants never (a) sold infringing products (since no products were operational without the keys which were separately purchased and then activated) and (b) Finjan did not allege indirect infringement or joint infringement with defendants’ customers. As noted above, it is only necessary to prove that the accused device is reasonably capable of operating in the described-claimed mode. The Court further stated:
“We addressed a similar infringement scenario in Fantasy Sports, where we held that software for playing fantasy football could infringe a claim to a ‘computer for playing football.’ 287 F.3d at 1118. The defendants who sold the software argued that because their product was a ‘modifiable software tool,’ direct infringement occurred only when users configured it to play games. Id. at 1117. Rejecting this contention, we explained that ‘although a user must activate the functions programmed into a piece of software by selecting those options, the user is only
activating means that are already present in the underlying software.’ Id. at 1118. Infringement occurred because the code ‘was written in such a way as to enable a user of that software to utilize the function . . . without having to modify that code.’ Id.” Finjan, slip opn. 12.
As for the method claims (for example, “[a] computer-based method, comprising the steps of: receiving … comparing … [and] preventing execution of the Downloadable [software]”), the Court found that Finjan (a) failed to prove that any customer in the U.S. engaged in any infringing activity; (b) no allegation of indirect infringement as asserted by Finjan; and, (c) no allegation of joint infringement was made.
As for the computer method claims, patentee Finjan did not establish that anyone in the U.S. used the patented method. To prove such infringement, the patentee must demonstrate direct infringement in the United States. See 35 U.S.C. § 271(a) (defining infringing activities as occurring “within the United States”); see also Gemtron Corp. v. Saint-Gobain Corp., 572 F.3d 1371, 1380 (Fed. Cir. 2009) (“Critically, it is the infringing act— making, using, offering to sell, selling, or importing—that must be within (or into) the United States.”). Notwithstanding the jury’s verdict of infringement, the Federal Circuit reversed the method claim infringement finding an absence of testing or operation of the accused method in the U.S.
In conclusion, although the presentation of three sets of patent claims (method, system and computer readable storage claims) significantly increases the cost of filing and prosecuting a computer program patent application, the presence of all three types of claims in patent infringement litigation provides the litigator with greater options to catch the infringer. In Finjan, these three sets of claims saved the lower court victory and preserved Finjan’s enhanced damages award.