A device may be found to infringe if it is reasonably capable of infringement during its ordinary use, even if the infringing functions must be activated before satisfying the particular language of the claim. When “a user must activate the functions programmed into a piece of software by selecting those options, the user is only activating the means that are already present in the underlying software.” 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.” (See also, Finjan, Inc. v. Secure Computing Corp., 626 F.3d 1197 (Fed. Cir. 2010) and Hilgraeve Corp. v. Symentec Corp., 265 F.3d 1336 (Fed. Cir. 2001).)
Background / Facts: The patents here relate to computer-based product pricing, with the claims being directed to leveraging “hierarchical” product and data structures to organize pricing information. The hierarchical pricing engine used less data than the prior art systems and provided dramatic improvements in performance, meeting with significant commercial success and prompting large players in the industry (including the defendant SAP) to roll out their own versions. SAP does not dispute that its software, as set up by the patentee’s expert during trial, performed the claimed functionality. Instead, it asserts that its software, as shipped to the customer, did not infringe. It argues that the claim language “computer instructions capable of” and “computer instructions causing a computer to implement” are not directed to source code. Rather, it argues that the language requires that the software, as shipped, contain computer “instructions” to perform the claimed functionality. In its view, the expert’s data setup added new computer “instructions” to SAP’s software, thereby changing and modifying a non-infringing product into an infringing product.
Issue(s): Whether activating latent infringing functions is a modification that transforms an otherwise non-infringing product into an infringing product.
Holding(s): No. In side stepping as a factual question the issue of whether “computer instructions” can include source code, the court said that (at least here) it did not matter because the accused device was nevertheless capable of infringement during ordinary use. “Versata’s expert did not alter or modify SAP’s code in order to achieve the claimed functionality. Rather, he followed SAP’s own directions on how to implement pricing functionality in its software and activated functions already present in the software: data structures, access sequences, pricing procedures, and condition types. SAP’s own expert admitted that each alleged alteration was part of the software’s capability, that it was not unusual for customers to perform the same actions, and that it was ‘expected that SAP’s customers who use the pricing functionality’ will use it with a similar data setup. … Furthermore, he testified that SAP expects its customers to set up access sequences, specific pricing procedures, and specific condition types.”