Establishing patent infringement in software cases depends upon whether an accused device is capable of operating in the any of the patented inventive modes based on what is already present in its underlying firmware. If a user must modify or otherwise alter the modules to perform the accused functionality, infringement cannot be proved. This distinction between modifying the device’s functionality and merely activating functionality that the device already contains may determine infringement of a software patent or not.
A patent applicant (“patentee) is free to recite features of a utility invention either structurally or functionally. Use of the word “for” within apparatus system claims usually provides functional limitations that describe capabilities without requiring that any software components be active or enabled. The repeated use of the word “for” in the claim limitations of a system patent covers functional capability and does not require that the program code be active, only that it be written for causing a server or a computer to perform certain steps. Use of the word “programmable” is an indication that the patentee is claiming an apparatus in terms of its functionality. If infringement is to be based upon a showing that an accused product was reasonably capable of performing the recited function, the words “capability” or “capable” are not actually required to be used in the patent claims.
Functional language in an apparatus claim only requires that an accused apparatus possess the capability of performing the recited function. When accused products contain multiple operating modes, to infringe a claim that recites capability and not actual operation, an accused device need only be capable of operating in the described mode. Thus, depending on the claims, an accused device may be found to infringe if it is reasonably capable of satisfying the claim limitations, even though it may also be capable of non-infringing modes of operation.
The above claim limitations, however, are relevant only to claim language that specifies that the claim is drawn to capability. Unless the claim language only requires the capacity to perform a particular claim element it is not enough to simply show that product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement. In patent infringement cases considering whether claim limitations are drawn to capability, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred. For instance, claim language clearly that specifies a particular configuration, rather than mere functional capability. Likewise, appellate courts have rejected the argument that the claims at issue only required capability when it concludes that the claims at issue are method claims. Thus, it appears that courts must make a threshold inquiry into the disputed claim language and decide whether 1) the claims are directed to functional capability or 2) instead require that certain method steps be taken or structural configurations be present.
Appellate courts have also found that structure may be provided by describing the claim limitation’s operation, which is more than just its function; it is how the function is achieved in the context of the invention. It is particularly important that a patentee include considerable description of how the claim’s stated functions are achieved in order for the presumption against means-plus-function claiming to remain intact. Additional language following the processing module claim limitation does not require that method steps be performed. It simply provides a description of how the claimed function is achieved in the context of the invention. For example, language of a “memory module” claim limitation similarly provides additional structure to describe the operation of a stated “storing” function.