The most obvious lesson here is the importance of apparatus claims over method claims. It is unclear why the patents at issue do not contain a single apparatus claim (I checked), but that would have seemingly overcome the whole direct vs. indirect infringement issue entirely and saved countless dollars in litigation expenses. (The claim drafting was curious at best, including only method claims but in fact focusing on apparatus limitations.) The second lesson is that it is usually good practice to avoid unnecessary steps like “providing” an element only to set it up for later use in the claim. Such elements can just easily be recited inferentially. Although the CAFC here bailed out the patentee by finding that “providing” an element can be performed by any entity, it is still just poor claim drafting that cost the patentee countless dollars in litigation expenses.
Background / Facts: The patents at issue are directed to methods of frothing milk, using aeration as compared to conventional steam. Generally speaking, the claims recite four steps: (1) providing a container that has a height to diameter aspect ratio of 2:1; (2) pouring liquid (e.g., milk) into the container; (3) introducing a plunger that includes at least a rod and plunger body with a screen; and (4) pumping the plunger to aerate the liquid. The ultimate issue is one of obviousness, but the district court proceedings below were so mishandled that the CAFC simply focused its analysis on claim construction for the step of “providing” the container (among other procedural issues). The defendant Bodum argued that it could not be liable for indirect infringement when no direct infringement, arguing that it could not be a direct infringer because it only practices the first step of the claim – “providing a container” – and its customers could not be direct infringers because, while they practice each of the other steps, they do not practice the “providing” step. (The court sidesteps the issue of “divided” infringement, which is unsettled at the moment and awaiting clarification en banc in Akamai Technologies, Inc. v. Limelight Networks, Inc., 629 F.3d 1311 (Fed. Cir. 2010), vacated, 419 F. App’x 989 (Fed. Cir. 2011).)
Issue(s): Whether “providing” the container is limited to manufacturing the container (i.e., by Bodum) or also encompasses mere acts such as pulling the container out of the cupboard to use it in the machine (i.e., by the customer).
Holding(s): Nothing in the claim language or the patent specification limits the “providing” step to a specific party. Under Bodum’s proffered dictionary definition, it is clear that Bodum “furnishes” or “supplies” the container by manufacturing and selling its milk frothers. It is also clear under that same definition, however, that anyone who takes a Bodum frother from the kitchen cabinet and places it on the counter before filling it with milk can satisfy the “providing” step. That person has undoubtedly made the container available for use and prepared it for frothing. Accordingly, the court construed the term “providing” to mean “furnishing, supplying, making available, or preparing” and found that anyone – Bodum or the end user of its products – can satisfy the providing step. Given this construction, the court found that the claims at issue are drawn to actions that can be performed by a single party. (Ultimately, the CAFC expressed shock at how during claim construction at the district court, neither the court nor either party asked to construe the term “providing,” and remanded for further proceedings based on this construction.)