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[bakhus]

Who is the actor in a method claim?

Suppose there is a device, and its operator (e.g. a person using the device), and maybe the manufacturer of the device that has configured it. Some things the device does, some things the operator does, and some things the manufacturer does.

Is it OK to define a method claim that has actions of all three parties? like do A, do B do C, where each is a different party? (use the device to do X, do Y to the operator, do Z to the device.) How about the device and the operator? do A, do B? Is it required to explicitly mention the who in 'who does what to who'?

[JimIvey]

You really don't want a claim in which someone has to make, use, or sell a human operator and a manufacturer along with the device itself.  In a method, you want to recite steps that only one entity needs to perform for infringement.

Hopefully, this will help (method performed by the operator and things done by the manufacturer have already been done):

"moving the level to a mark that has been made on the case during manufacture of the case".

Regards.

[khazzah]

In a method, you want to recite steps that only one entity needs to perform for infringement.

Because a) direct infringement under Section 271 requires steps performed by one unless you can show joint infringement; and b) you can't get contributory or indirect infringement without a direct infringer.

For more on the case law of joint infringement, see

http://ip.annualcle.com/2011/06/david-donoghue-rocky-mountain-ip-conference-joint-infringement-update/
http://www.kk-llp.com/publication-detail.asp?pubid=61

[bakhus]

OK. I understand. Joint infringement is a bad thing. I should try describing the method from a single actor point of view. By the way, which actor is the best?

If I were to mix the operator actions, and the device actions e.g. I dial a phone number, and the phone is creating a voice over IP channel = dialing a phone number, and creating a voIP channel. Would a person say he didn't infringe because he didn't create the voIP channel, but just dialed, and the device manufacturer would say that his device does not infringe because it doesn't dial the numbers, but just interpret dial actions of a user?!

In this context, I would think that the human operator is the best actor ... because it is possible to prosecute a human, whereas how would a device be prosecuted? With that in mind, the manufacturer is also a good actor, although defining a method claim with the manufacturer as an actor may be impossible, because usually the manufacturer doesn't participate in actions of the device.

This is even a bigger problem than I thought - my favorite actor, the human being can't create a voIP channel, so maybe it is not possible to define the method from the human operator perspective. Even if it was possible, is prosecuting end users feasible? With the phone as the actor, I can define 'interpreting a dialed number' and have it defined from the phone's perspective, but then I wouldn't be able to prosecute the manufacturer, or the human operator, would I?

[JimIvey]

By the way, which actor is the best?

Using your example of the human caller and the VoIP system (client side?  server side?), there are a number of reasons to not have the human caller as the method actor.

First, I assume you're hoping to sell or license the VoIP system.  If so, it's probably not best to sue all your would-be customers.  It's considered rude.

Second, considering that it often costs millions of dollars to maintain a patent infringement law suit, do you really want to sue hundreds of thousands (or millions) individually for a reasonable royalty of something like $10/month?  Or would you rather sue Vonage or Microsoft just once?

Third, even if you want to not sue and negotiate a license instead (though negotiation often requires the threat of a law suit -- even if only implicit), why would Microsoft (new owner of Skype) take a license when they wouldn't even infringe the claim?  They might refer you to the millions of Skype users to negotiate with each, one-on-one.

Regards.

[bakhus]

I see your point, Jim. The end user is not a good option, and ... that leaves just the device, and the manufacturer. It is not possible to sue the device, is it? and the manufacturer is not participating when the end user use the device, so I think that the manufacturer can't be the actor of these actions, unless there is a semantic trick to introduce the manufacturer to the equation, is there?

Are method claims for a device a dead end?

For some reason I had in mind that one draft claims for a device as device claims, and as method claims, but now I can't see why to draft method claims for a device at all.

[khazzah]

but now I can't see why to draft method claims for a device at all.

Although this is implicit in our discussion, I'll state explicitly that we're talking about "method of use" claims. Method of manufacture claims do have value, when it's the process of making something that's novel.

Here's what I was taught about the value of method-of-use claims ... There are inventions that won't be infringed "in the box", ie, as manufactured or sold. In such a case, you need method-of-use to capture the end user as a direct infringer. Note that don't actually have to sue the end user, instead you often sue the seller or manufacturer for contributory or indirect. Not ideal, but if that's the only way to catch infringement, so be it.

The counter-argument to the above is: the doesn't-infringe-in-the-box scenario is often caused by bad claim drafting. Don't claim a device including "a pin extending into a slot when the engagement member is in a locked position".  Claim instead a device including "a pin configured to extend ..." The second claim does infringe in the box, where the first doesn't because the device hasn't yet been locked.

Some clients insist on method-of-use claims, in which case I oblige.

[bakhus]

OK, if it is possible to sue a seller or manufacturer for contributory or indirect method-of-use infringement, then it can be useful. Is contributory or indirect infringement limited to the USA?

Is a method-of-operation worth anything? I mean a method from the device perspective, in which the device is the actor e.g. a method comprising sensing dialed numbers, and establishing a voIP connection to the dialed number. If the device infringe a method claim while someone owns that device, is the owner of the device liable for the device's actions? Can the owner be sued for it? Is it considered to be a direct infringement by the device or owner?

[khazzah]

Is a method-of-operation worth anything?

I gave my two cents of that in my last post. I draft such claims only when my clients ask for them.

Is a method-of-operation worth anything?
If the device infringe a method claim while someone owns that device, is the owner of the device liable for the device's actions? Can the owner be sued for it? Is it considered to be a direct infringement by the device or owner?

You can't sue a device. You sue the appropriate natural person or business entity under one/more of the prongs of the direct infringement staute, 35 USC 271

• the user (271a "use")
  
• the seller (271a "sells or offers for sale")
• the manufacturer (271a "makes")
• the importer (271e "imports")

[bakhus]

Thanks Karen

35 USC 271 (a) 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.

If the patented invention is a method that a device is configured to perform, and the device on the shelf doesn't perform the method, and perform it after activated by a user, does that make it legal to make and sell the device?

I think that using the device can be thought of as using the method that the device uses, is that how the court would consider it?

[khazzah]

You sue the appropriate natural person or business entity under one/more of the prongs of the direct infringement staute, 35 USC 271

• the user (271a "use")
  
• the seller (271a "sells or offers for sale")
• the manufacturer (271a "makes")
• the importer (271e "imports")

The above is true, but may nonetheless be confusing because OP asked about indirect infringement.

In the context of indirect infringement, you sue the indirect infringer under 271(b) (inducement) or 271(c) (contributory). You must also allege a direct infringer who makes, uses, sells/offers (271(a)), or imports (271(e)). But the direct infringer doesn't have to be a party to the induced infringement lawsuit.

[khazzah]

If the patented invention is a method that a device is configured to perform, and the device on the shelf doesn't perform the method, and perform it after activated by a user, does that make it legal to make and sell the device?

Not necessarily. You're right that the maker and seller are not direct infringers. But the maker and seller may be liable for indirect infringement.

[NJ Patent1]

Aplogies, I'm a bit confused by the thread. Methods and manufacures (devices) are separate statutory classifications.  Is the device especially adapted to perform the patented method, having no other non-infringing uses?  If yes, ok I agree.  If no, it appears patentee is left with inducement, not contributory infringement.  I can use my computer to practice Amazon's "one-click" method, but I can also use it to participate in the on-line discussion. 

Re: inducement of a method claim, didn't a recent case stand for - or reaffirm - the principal that there must be some control or "agency" relationship along the entire chain of inducers of infringement of computer-based method claims? 

[khazzah]

Is the device especially adapted to perform the patented method, having no other non-infringing uses?  If yes, ok I agree.  If no, it appears patentee is left with inducement, not contributory infringement.  I can use my computer to practice Amazon's "one-click" method, but I can also use it to participate in the on-line discussion. 

I didn't get into the facts of the hypo enough to distinguish between contributory or inducement. By saying "indirect" I meant to apply "whichever one is appropriate under the facts."

Re: inducement of a method claim, didn't a recent case stand for - or reaffirm - the principal that there must be some control or "agency" relationship along the entire chain of inducers of infringement of computer-based method claims? 

From what I recall of the recent joint infringement cases (Akamai and McKesson), the decisions said that agency was required to have *direct* infringement. This is important because you don't even reach induced infringement unless you can show a direct infringer. And apparently this is a problem with a lot of Internet/software/business method claims being litigated today.