Divided Infringement: Strategies For Drafting Claims


Dale Lazar, Partner at DLA Piper and Practice Center Contributor , sent in this article discussing divided infringement and how it generally pertains to large systems and corresponding methods.  Lazar will be speaking tat PLI’s Patent Law Insitute this Thursday, February 17th. The following is an excerpt from the aticle.

Divided infringement issues are most likely to arise in the context of large systems and corresponding methods, where multiple parties may contribute to or participate in the system.  A common instance where divided infringement is likely to arise is a network of computers where the functionality of the system is distributed across the computers of the network.  The network employed to connect the computers may be a LAN/WAN and/or the Internet.  Particularly where different computers perform different functions for the overall system, the different computers may be owned or operated by different parties, typically with each party not being controlled by other parties involved with the system.

Included at the end of this paper is a patent application directed to a “Reliance Server for a Transaction System”.  In many ways, the invention is typical of Internet-based inventions – inventions that are implemented over an open communications channel, such as the Internet.  The application has been simplified to focus on only a few of the features of the invention.  Please read the application as a basis for understanding the following remarks concerning divided infringement.

Claim Drafting Suggestions

Draft System Claims as Well as Claims Directed to the Actions and Apparatus of Each Party in Multi-Party Systems

Frequently inventions implemented over the Internet involve the interactions of several parties.  In the application at the end of this paper, the transaction system involves the interactions of a subscriber mechanism, a relying party mechanism, a reliance manager mechanism and a certification authority mechanism.  In drafting claims to such a multi-party system, you should consider claims directed to the overall system, such as claims 1 and 5 in the application at the end of the paper.  However, the Internet readily enables different parties to use a system. Those different parties may even be located in different countries.  If different, unrelated parties operate different components of a system claim, who directly infringes?  The problem only gets worse if the parties reside in different countries.  Perhaps one entity or several entities under common control have provided software to all the parties with which the system is implemented.  Thus the entity responsible for the overall system might be an infringer of the system claims.  Damage might be based on the value of the system.

However, the value of a patent is maximized by maximizing the possibilities of direct infringement.  Thus, not only is it desirable to consider system claims, but it is also desirable to have claims specifically directed to the actions of each party or portion of a system.  In the application at the end of the paper, claims 2, 6, 9, 12 and 15 are all directed to the actions of a relying party mechanism and the equipment that a relying party mechanism must have to implement the system.  Thus, for example, method claim 2 simply comprises receiving signals representing a transaction, creating a reliance request message, and causing signals representing the reliance request message to be sent to a reliance server.  These are the actions taken by a relying party mechanism in the transaction system.  These claims do not require the actions of any other party.  A relying party in the United States would directly infringe this claim and the other claims directed to the relying party.

Similarly, claims 3, 7, 10, 14 and 16 are all directed to the actions taken by the reliance manager mechanism and the apparatus that a reliance manager mechanism would need to implement this system.  For example, method claim 3 recites receiving signals representing a reliance request message, determining whether to provide transactional assurance, and generating signals representing an indication of whether transactional assurance is available.  Since only the actions of a reliance manager are claimed, a reliance manager in the United States would directly infringe these claims.

Claims 4, 8, 11, 13 and 17 are directed to the actions of a certification authority mechanism and the apparatus that a certification authority would need to implement the system.  These claims would be infringed by a certification authority in the United States operating within the system described in the application.

By separately claiming the actions taken or apparatus needed for each of the participants in a system, we have maximized the likelihood of finding a direct infringer of at least one claim of the patent and avoiding issues of divided infringement.

Draft Claims to Multiple Classes of Invention

The strength of a patent is maximized by claiming an invention in as many different ways as possible.  Not only do we want to present claims directed to the actions of each participant in a multi-party system, but we also want to present claims directed to multiple classes of invention.  This is demonstrated in the application at the end of this paper.  Thus, for example, claims 5-8 are directed to a structured transaction system.  These claims take a structural approach to various aspects of the system.

Claims 1-4 are method claims.  Each of the method claims is directed to a different aspect of the system.

Claims 9-11 are directed to a computer-readable medium tangibly embodying a program of instructions executable by a computer to perform a method.  The body of the claim recites the method that the computer can perform.  Thus, these claims are directed to the combination of computer-readable media and software.  By indicating that the software is executable by a program to perform a method, we have maximized the likelihood that the claim will be determined as reciting a practical utility, meeting the standard of §101.

Claims 12-14 are directed to a memory medium in a transaction system, in which the medium stores software programmed to implement a method.  The body of the claim recites that method.  As with claims 9-11, by suggesting that the software in the memory implements aspects of a structured transaction system, we have enhanced the likelihood that the claim will meet the requirements of §101.

Finally, claims 15-17 are directed to at least one computer programmed to execute a particular process.  The body of the claim recites that process.

Read Lazar’s Divideded Infringement Strategies For Drafting Claims including the the patent application at the end of the article.

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