A system claim is a claim directed to a system having a number of different components that work together. In Intellectual Ventures I LLC v. Motorola Mobility LLC (Fed. Cir. 2017), the patent claim being litigated was a system claim. The patent was directed to the broad concept of transferring computer files electronically from one location to another, and more particularly to electronic transfer of computer files directly between two or more computers or computing devices.” With the rise of mobile phones that have very powerful microprocessors, many of these computer based patents are being applied in the mobile phone context.
The patent being asserted by IV against Motorola was a system claim. The system claim was very long and for the purposes of highlighting only the relevant parts of the system claim, I will summarize the claim as follows. The claimed system included a “communications device,” a “second device,” and an “authenticating device configured to … generate a delivery report.” The parties did not dispute whether a user of Motorola’s mobile phones “used” the first two components but focused on whether Motorola’s users used the third component, namely, an authenticating device configured to … generate a delivery report for the purposes of establishing direct infringement under 35 USC Section 271(a).
Section 271(a) states that “Except as otherwise provided in this title, whoever without authority makes, uses, offers to sell, or sells any patented invention, within the United States or imports into the United States any patented invention during the term of the patent therefor, infringes the patent.” (emphasis added)
If IV could establish that Motorola’s customers “used” the claimed system to establish direct infringement by Motorola’s customers, then IV could then move to the next step of proving that Motorola would be liable for patent infringement under a theory of indirect infringement. IV was unable to show that Motorola’s customers used the claimed system, as discussed below.
Drafting a claim is one of the hardest part of preparing a patent application and also one of the hardest parts of prosecuting a patent application. In this case, IV choose to seek a system claim comprising all three of the 1) communications device, 2) the second device and 3) the authenticating device. I am unsure whether IV ever sought a claim solely directed individually to each of the communications device, the second device and the authenticating device which could have been enough to establish patent infringement.
However, for the purposes of this litigation, IV choose to litigate the system claim against Motorola and was unsuccessful in holding Motorola liable for patent infringement.
During the litigation, the parties agreed that Centillion controlled the definition of whether there was a use of a system claim. Based on Centillion Data Systems, LLC v. Qwest Comm. Int., Inc. (Fed. Cir. 2011) and NTP, Inc. v. Research in Motion, Ltd. (Fed. Cir. 2005), the Federal Circuit concluded that to prove an infringing use of a system under Section 271(a), a patentee must demonstrate “use” – that is, “control” and “benefit” – of the claimed system by an accused direct infringer.
IV argued that the benefit to the direct infringer is in the context of the system “as a whole” instead of on a “limitation-by-limitation” basis. The former would be easier to show than the later because IV only had to establish some benefit from the claimed system. The Federal Circuit disagreed and found that “to use a system [to establish infringement under Section 271(a)], a person must control (even if indirectly) and benefit from each claimed component.” (emphasis added).
Here, Motorola attacked the third component of the system, namely, an “authenticating device configured to … generate a delivery report.” Motorola argued that the end users received no benefit from this limitation. The Federal Circuit went through the alleged benefits proferred by IV that Motorola’s customers may have received and why the users did not receive the purported benefits.
IV argued that the end user benefitted from the delivery report because the delivery report could be used for authentication purposes. The Federal Circuit dismissed this benefit because nothing in the record indicated how this benefit flowed from the delivery reports to the customer.
The asserted patent did mention a benefit to the user based on the delivery report but the evidence of record indicated that the end user never received the delivery report and the phones that the end user was rendered technologically incapable of transmitting delivery reports.
The main problem that IV encountered in trying to show the benefit was that their main argument was that the benefit could be shown in terms of “as a whole” analysis and as a result did not appear to focus on or try to show benefits on a limitation by limitation basis.
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