A manufacturer can directly infringe an apparatus claim if its system or product is “reasonably capable” of satisfying the claim elements even though it may also be capable of non-infringing modes of operation. Here, for example, a Wi-Fi compliant device was found to directly infringe the claimed “processor for arranging information for transmission [in accordance with the Wi-Fi standard]” even when it did not always use the prescribed fields in the manner dictated by the standard because it was nevertheless at least reasonably capable of doing so. “While ‘a device does not infringe simply because it is possible to alter it in a way that would satisfy all the limitations of a patent claim,’ … an accused product ‘may be found to infringe if it is reasonably capable of satisfying the claim limitation.’” It may therefore be best to phrase apparatus claim elements merely as requiring a particular capability (e.g., an element “for” performing or “configured to” perform a given operation) rather than requiring actual performance per se (e.g., an element “that” performs the operation).
Background / Facts: The patents being asserted here are alleged to be essential to the Wi-Fi standard, which would mean that all Wi-Fi-capable devices infringe the patents. In particular, the patents disclose adding a “service type identifier” field (“TID”) to Wi-Fi packets, among other features, to prioritize certain types of transmissions (e.g., voice calling). In this regard, the claims recite “a processor for arranging information for transmission … which includes a service type identifier [TID] which identifies a type of payload information.” In the accused devices, the TID field is present but does not always identify its payload type—sometimes it is used to convey a priority value that does not match the payload type.
Issue(s): Whether a system or product can directly infringe a claim if it is reasonably capable of satisfying the claim elements even though it may also be capable of non-infringing modes of operation.
Holding(s): Yes. “We understand that the TID field may be inherently only a priority field. But that field necessarily has the capability to be used to identify the payload type, as shown by the informative example in the [Wi-Fi] standard and by the proof that it was in fact so used by some device users. Crucially, this capability satisfies the patent claim language here [i.e. a ‘processor for …’]. … Though a user must install and activate functions in the software to infringe the claims, [our precedent establishes] that the user is only activating means that are already present in the underlying software.” For method claims, however, the court noted that “none of our decisions have found direct infringement of a method claim by sales of an end user product which performs the entire method, and we decline to do so here.”