The claims section of a patent defines the metes and bounds of what the inventor is claiming as their invention. As such, the claims section is an important part of the patent.
The claim set is the most difficult section of the patent to draft because it is always a balancing act between breadth and validity. The claims are located at the back of the patent document and usually begins with “What is claimed is:”, “We claim:” or “I claim:”.
In general, a claim can be divided into different elements such as steps A, B and C for a method claim. For example, a hypothetical method claim for a new way to drive a car may recite “A method for controlling a car comprising the steps of grasping a joystick (i.e., element A), moving the joystick (i.e., element B) and transmitting GPS position of the car (i.e., element C). When one entity makes, uses, sells or imports a device that incorporates all of the steps A, B and C or performs all of the steps A, B and C then that entity is infringing on the patent. However, when two different entities collectively practice all of the steps, but not individually then neither entity is infringing on the claimed invention. For example, if the driver performs steps A and B but a third party does the transmitting step then the driver and the third party do not infringe the method claim. Accordingly, the claims when drafted should be directed so that the claim can be infringed by one entity. The following case illustrates this issue.
SiRF (alleged infringers) manufactured and sold GPS units to end users. Global Locate (patentee) held patents related to GPS technology. The claims of the patents at issue required the step of transmitting data to the end user and processing the data at the GPS receiver. SiRF contended that they did not perform all of the steps recited in the claims of the patent, namely, the processing step. SiRF transmitted the data to the end user but the GPS receiver operated by the end user processed the data. The end users performed the processing steps with the GPS receiver. Accordingly, it appears that no single entity performed all of the steps of the claimed method. Nonetheless, the court held that SiRF performed the processing step even though the GPS receivers were being used by the end users. The reason is that the GPS receivers were built and sold by SiRF enabled and ready to process data. SiRF’s device automatically performed the processing step. Hence, the Court held that SiRF infringed the asserted claims. SiRF Technology v. ITC 2009-1262 (Fed. Cir. April 12, 2010).
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