Federal Circuit Clarifies Standard on “Capable of” Infringement in a Computer-Implemented Invention
By Cook Alciati | September 12, 2022
In its recent decision in INVT SPE LLC v. ITC, 2022 WL 3904135 (Fed. Cir. Aug. 31, 2022), the Federal Circuit affirmed an ITC finding of no violation. In doing so, the Federal Circuit took the opportunity to address infringement of claims that are “drawn to capability.” On that score, the Federal Circuit explained: “For infringement purposes, a computer-implemented claim drawn to a functional capability requires some showing that the accused computer-implemented device is programmed or otherwise configured, without modification, to perform the claimed function when in operation.” INVT, 2022 WL 3904135, at *1.
The Federal Circuit reviewed prior decisions, explaining that a computer-implemented invention can be different than, for example, a mechanical one because “[f]unctional language is used to define and delimit otherwise generic or interchangeable general purpose computer hardware, which can be programmed to perform an unlimited array of functions.” The Court further explained that it has “frequently construed such functional language as not requiring actual performance of those operative steps for infringement purposes” and that it has “not required claims to adhere to a specific grammatical form to find that the claim is drawn to capability.”
The Court then found that claim 1 of U.S. Patent No. 7,848,439 was directed to capability. The Court focused on the following limitations:
a receiving section that receives a signal containing data modulated and encoded on a per subband group basis at the communicating party using the modulation parameters and the coding parameters of the parameter information transmitted at the parameter information transmission section;
a data obtaining section that demodulates and decodes the received signal received at the receiving section on a per subband group basis using the modulation parameters and the coding parameters decided at the parameter deciding section, and obtains the data contained in the received signal;
The Court noted that it sees “very little significance in the difference between a limitation that might recite ‘a data obtaining section for demodulating and decoding’ . . . and one that recites ‘a data obtaining section that demodulates and decodes’ (the actual ’439 claim language), for determining on which side of the capability/actual-operation line the claims fall.” Ultimately, the Court held that “the asserted ’439 claims are directed to capability—as in a device that includes ‘software components with specific purposes,’ programmed to have the ability to perform the operative steps: namely, a ‘receiving section’ that can receive a signal containing data modulated and encoded using the parameters decided at user device, and a ‘data obtaining section’ that can demodulate and decode the signal using the parameters decided at the user device.”
Despite agreeing with the patentee that the claims could be met by a device with the “capability” to receive, demodulate, and decode, the Court found that infringement had not been demonstrated. In that regard, the Court clarified that “[a]n accused device cannot meet the required capabilities of the ’439 claims without evidence or agreement that the accused device performs, without modification, the recited functions at least once when it is in operation.” The Court found no evidence in the record to support infringement under this standard, and therefore affirmed the ITC.