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   When is something "capable of" doing X?
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   Author  Topic: When is something "capable of" doing X?  (Read 1702 times)
Isaac
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Re: When is something "capable of" doing
« Reply #5 on: Jun 16th, 2006, 9:06am »
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on Jun 16th, 2006, 8:21am, JohnGalt wrote:

 
"wherein the controller is capable of providing...."
 
My client has a circuit that is wired properly to provide this function and is driven by a programmable controller, but it is not shipped with the programming to do it. All that would be required is a software download and it would "provide" the function. This being the case, I am curious if even without this software it is "capable of" providing the function much in the way that a computer is "capable of" executing any program that it has stored locally.

 
Leaving out the software might not be enough to avoid infringement liability.   If the circuitry without the software has no substantial purpose other than serving as the host for infringing software, then liability might attach to making and selling the circuitry.    Further there is the potential for indirect liability if the client's customers are infringing.
 
Also look out for claims to a software product.  Those claims are often written to cover distribution of software which when loaded can carry out a patented method.
« Last Edit: Jun 16th, 2006, 9:09am by Isaac » IP Logged

Isaac
JohnGalt
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Re: When is something "capable of" doing
« Reply #6 on: Jun 16th, 2006, 9:11am »
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Now my only problem is finding the authority for this. I need to brief this but I don't want to come up short on case law. That's what I'm having a problem with right now. I would think that this has been addressed before but I can't find a thing that is on point.
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Isaac
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Re: When is something "capable of" doing
« Reply #7 on: Jun 16th, 2006, 9:26am »
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IMO trying to research the issue by looking for "capable of" cases sounds like a dead end, but if you've been tasked with answering that question, I guess you have to.
 
As Jim's post suggests, there may not be any legal difference between "operable to" and "capable of".  
 
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Isaac
JimIvey
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  jamesdivey  
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Re: When is something "capable of" doing
« Reply #8 on: Jun 16th, 2006, 9:48am »
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on Jun 16th, 2006, 8:21am, JohnGalt wrote:
My client has a product that may anticipate a claim on which he is being prosecuted for infringment. The claim says:
 
"wherein the controller is capable of providing...."
 
My client has a circuit that is wired properly to provide this function and is driven by a programmable controller, but it is not shipped with the programming to do it. All that would be required is a software download and it would "provide" the function.

Did anyone else download and install the software more than a year prior to the filing date of the application for the patent in question.  Then, your device with such capability was arguably "in use" more than one year before the applicable priority date and qualifies as prior art.  It's even possible that the particular capability didn't have to be used so long as your device was "capable of" the recited function and "in use" for perhaps some other function.  If your device was actually used to perform that function more than a year prior to the applicable priority date, all the better.
 
Regards.
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James D. Ivey
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JohnGalt
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Re: When is something "capable of" doing
« Reply #9 on: Jun 16th, 2006, 10:32am »
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This was a product with firmware (embedded software) that was not programmable by the user - only the manufacturer. The manufacturer did not create a program to provide the described functionality but the device was fully capable of doing it on a circuitry level with the applicable programming.
 
We do have a date of sale more than a year before the priority date but I am having trouble backing my statement that our product was "capable of providing" this functionality without it being actually programmed to do such.
 
By the way - I am a summer intern (2nd year law student) assigned this task by my partner so I can't go back without authority. I do agree with Isaac that searching for cases with "capable of providing" in a disputed claim is a dead end. Chism has nothing as well. Thanks for any help that you can provide - and already have provided.
 
John
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