one infringer or two?

[EagerDrafter]

I believe these hypo claims 1-3 (but not 4) each identify generally only one infringer, but I would like a second opinion.

In my field, typically the transmitter and the receiver are different parties: different manufacturers, sellers, users. Imagine the transmitter a cellular base station, and the receiver a mobile handset.

  Claim 1: A method ... comprising transmitting a message

  Claim 2: A method ... comprising transmitting a message to a receiver

  Claim 3: A method ... comprising transmitting a message to a receiver, wherein the receiver processes the message according to ...

In claim 3, the intent of the "process ... according to..." limitation is to overcome any hypothetical prior art that claim 2 does not.

It would also seem that the transmitting would not infringe on Claim 3 if the receiver does not perform the mentioned processing. But as long as the processing is performed by the receiving party (e.g. a handset maker/user), the transmitting party (e.g. the base station maker/user) is infringing. Correct? Not as strong as claims 1 & 2, but perhaps as good as it gets if prior art must be overcome.

  Claim 4: A method ... comprising transmitting a message to a receiver; processing the message in the receiver according to ...

Claim 4 is infringed by a party if they make/use the base station and the handset. Not my favoured option.

Thoughts?

[MYK]

Well, I was going to say that one party has to perform all the steps in order to infringe, but apparently that's been loosened up in the last four years.  What you're looking at is called "joint infringement" or "divided infringement" and it's not straightforward.

https://www.hinshawlaw.com/newsroom-updates-699.html

If you're in a situation where you have no choice but to claim something that would result in that, you'll really want to hire a competent drafter who can try to tailor the claims so that they'll at least meet whatever the current tests are, and not do it yourself.  And there's no telling if or when a Supreme Court case will overturn the CAFC's attempts to make things interesting.

Here are some of the now-outdated cases:
https://www.finnegan.com/en/insights/the-changing-law-of-multiparty-patent-infringement-in-the-u-s-1.html
Note the date on that article and realize that the situations described in any or all of them might not fall under the newer caselaw.

Also, since you wrote "favour", you're obviously not in the U.S., so be warned that the laws are going to vary significantly in other countries, including wherever you are.

[EagerDrafter]

Thanks MYK, yes this is about divided infringement in the US jurisdiction.

Any comments on claim 3, in this respect?

And, for claim 4 (as written), I don't see it as an arrangement with one of the two in a different jurisdiction operating under control of the other, in which case divided infringement would likely apply.

I can think of structural or mechanical analogies, such as mounting A to B, but I'd like to remain within the realm of communications.

[MYK]

Let me go back a bit.  Claims 1 and 2 are, for the fragments given, performed by only one party.

For claims 3 and 4, there's not nearly enough information for me to even begin saying whether you could successfully prove divided infringement.  The rest of the language of the claims would be a start, but even that is not in itself sufficient.  From a quick off-the-cuff overview of the 2015 Akamai/Limelight case (see the Hinshaw link -- and you should check that it's still valid caselaw), you still have to prove a fairly narrow two-stage test with two possible options for the second stage.  None of that is apparent from the claim fragments you've given.

I think the biggest problem is that (from my interpretation of what you've written) you're directing the claims at what the two parties are doing.  But when you start discussing cellular base stations and handsets, you're no longer talking about humans or companies being involved, you're talking about electronic hardware doing what electronic hardware does.  Why not write these as system claims directed toward how the hardware in the tx/rx process the signal or protocol?  Then, especially if one company is supplying both types of hardware, or even controlling the standard that requires the receiver to do what it does, you should be able to prove direct infringement by one party.

But maybe I'm misinterpreting how you've intended this.

Also, just to be sure you know, when you have one party in "a different jurisdiction", by which I assume you mean separate countries, you immediately lose the ability to enforce method claims (unless there's been another major change I haven't heard of) -- see how things played out in NTP v. RIM.  All steps of a method have to be performed in the United States, and RIM's email server was located in Canada, therefore no method claim infringement was possible;  it got dropped early in the case.  NTP only prevailed because they also had system claims.  It's possible that these new cases may somehow undo that all-in-America rule, but I wouldn't want to count on it.

Disclaimer: please talk with a patent litigator.  I'm not one, and it's clear from the new cases on divided infringement that I'm not nearly up-to-date enough to be able to discuss this with any sense of authority.

[midwestengineer]

I believe these hypo claims 1-3 (but not 4) each identify generally only one infringer, but I would like a second opinion.

In my field, typically the transmitter and the receiver are different parties: different manufacturers, sellers, users. Imagine the transmitter a cellular base station, and the receiver a mobile handset.

  Claim 1: A method ... comprising transmitting a message

  Claim 2: A method ... comprising transmitting a message to a receiver

  Claim 3: A method ... comprising transmitting a message to a receiver, wherein the receiver processes the message according to ...

In claim 3, the intent of the "process ... according to..." limitation is to overcome any hypothetical prior art that claim 2 does not.

It would also seem that the transmitting would not infringe on Claim 3 if the receiver does not perform the mentioned processing. But as long as the processing is performed by the receiving party (e.g. a handset maker/user), the transmitting party (e.g. the base station maker/user) is infringing. Correct? Not as strong as claims 1 & 2, but perhaps as good as it gets if prior art must be overcome.

  Claim 4: A method ... comprising transmitting a message to a receiver; processing the message in the receiver according to ...

Claim 4 is infringed by a party if they make/use the base station and the handset. Not my favoured option.

Thoughts?

Claims 3 and 4 both include limitations that would be performed by different infringers.  Divided infringement.  There are extremely limited situations where a court might hold that claim 3 would be infringed by a transmitter manufacturer if a user of a handset performed the processing.  You likely need to carefully think about the protocol and draft other claims that only implicate the transmitter.

[EagerDrafter]

Thanks, midwestengineer.

I am glad you provided your input, because your comment comes as a surprise to me in regards to Claim 3.

I could see a case for a single infringer in Claim 3, if the receiver performed the limitation under direction/control of the transmitter (Akamai/Limelight). Direction/control could apply if there is an obligation at a technical/protocol level due to base station - mobile station association (many standards contain a preponderance of sections on mandatory responses).

However, direction/control aside, I would have thought that the mechanics of Claim 3, prima facie, call out a single party infringer: the transmitter manufacturer or operator. Infringement would occur as soon as the receiver performs the limitation, even in absence of control/direction by the transmitter. This interpretation is even aided by the obvious presumption that the transmitter intended the receiver to perform the limitation.

If Claim 3 is failing at that in its current form, how about:

   Claim 3b: A method ... comprising transmitting a message to a receiver,
   wherein the receiver is configured to processes the message according to ...

[EvilLost]

However, direction/control aside, I would have thought that the mechanics of Claim 3, prima facie, call out a single party infringer: the transmitter manufacturer or operator. Infringement would occur as soon as the receiver performs the limitation, even in absence of control/direction by the transmitter. This interpretation is even aided by the obvious presumption that the transmitter intended the receiver to perform the limitation.

I'm not sure why you think so. As you state yourself, infringement occurs once the receiver performs an action. Who owns/controls the receiver? If its a different entity from the one transmitting, then you probably have divided infringement.

As MYK said, enforcing it is another matter entirely.

If Claim 3 is failing at that in its current form, how about:

   Claim 3b: A method ... comprising transmitting a message to a receiver,
   wherein the receiver is configured to processes the message according to ...

I don't think this helps. The "configured to" form addresses a machine that is sitting on the shelf (rather than "actually" doing the thing). This doesn't address the problem you previously had, which is that the receiver is still a limitation of the claim and (presumably) owned by a different entity.

In my opinion, these are not well drafted claims. You should not be combining limitations from the receiver/transmitter (i.e. 2 different entities) in one claim. Your claim set should have one set of claims (e.g. an independent + correspnding dependent claims) directed to the transmitter and its features and a separate set (e.g. an independent + corresponding dependent claims) directed to the receiver and its features. Then you can have a corresponding method claim for each apparatus claim (4 ind. claims total).

Without knowing the rest of the claim, I would suggest changing transmitting to receiving so that only the entity owning the receiver is infringing. This might be your consumer and someone you don't wish to sue, so you have to keep that in mind too.

Claim 3c: A method ... comprising receiving a message at a receiver, wherein the receiver... 

[EagerDrafter]

Thank you, EvilLost, for joining. And apologies to MYK. I somehow missed your second post reply when I was writing earlier, so thank you as well.

As for drafting separate transmitter and receiver claims, and for each a method and apparatus claim (4 independent claims), yes that is the plan. I was advised of the same by EvilLost in a different thread.

As for a 5th ind. claim, a system claim, yes that could an option per NTP/RIM. This would help in enforcement and litigation, if claims 1 and 2 are insufficiently broad.

What I glean so far is that including handset limitations in a base station method claim is just as ineffective as including multi-party (multi-actor) steps.

My objective of including the receiver in the transmitter method claim served to overcome prior art, as it is possible that claims 1 and 2 are not sufficiently limited in my case. In this thread I am exploring my options. There are also other ways to further limit the transmitter by detailing what's in the message, and that may be the way to go:

   Claim 1b: A method ... comprising transmitting a message; wherein the message... , wherein the transmission ...

   Claim 3c: A method ... comprising receiving a message at a receiver, wherein the receiver..., wherein the message...

   Claim 4: A system ... comprising a transmitter and a receiver; wherein the transmitter... , wherein the receiver...

The discussion so far has led me to perhaps another option to refer to a receiver without making the receiver an actor in divided infringement:

   Claim 2b: A method ... comprising transmitting a message to a receiver;
   wherein the message comprises information about .. (e.g. frequency channel, scheduling)... for the receiver.

I also considered the variant "wherein the message comprises information about ... for use by the receiver" but I feared this introduce the receiver as an actor, which is what I am trying to avoid.

[Learner]

in my limited understanding:

a) There is a transmitter and a receiver - independent entities.

b) Transmitter transmits a message which is processed by the receiver.

c) infringement happens when the receiver processes the message in a certain way .. there could be other ways not being covered here.


So why claim transmission .. claim reception and processing therein instead....

Or as said, claim some elements in transmission which are required for processing at the reception ...then transmission in that way itself suffices ?

Maybe I am missing something ?

[EagerDrafter]

@Learner
>> So why claim transmission

Transmitter and receiver are generally different parties. See above. Best to cover both infringers.

>> claim some elements in transmission which are required for processing at the reception

Yes, that's the plan now based on what came out of this thread. When I post those claims I'd certainly appreciate your review.