Method Claims

A method claim (also called a process claim) protects the steps of performing an act or series of acts, rather than a product, apparatus, or composition: LEGAL BASIS: 35 U.S.C. § 101 lists 'process' as one of the four patentable categories (process, machine, manufacture, composition of matter); STRUCTURE: a method claim typically begins with a preamble describing what the method achieves, followed by a series of steps introduced by action verbs (e.g., 'comprising the steps of: a) detecting...; b) processing...; c) transmitting...'); STEP LIMITATIONS: each step is a limitation of the claim; ALL steps must be present for literal infringement; a method claim is not infringed if any step is omitted; ACTIVE VERB FORMAT: each step uses active verbs in the gerund form ('detecting,' 'processing,' 'transmitting') or infinitive form ('detect,' 'process,' 'transmit'); ORDER OF STEPS: unless the specification or claim language requires a specific sequence, the steps of a method claim may be performed in any order that achieves the claimed result; when order matters, claim language explicitly states 'first...then...subsequently...'; OPEN vs. CLOSED: 'comprising' = open (additional steps can be performed without avoiding infringement); 'consisting of' = closed (only those exact steps); COMPARED TO APPARATUS CLAIMS: apparatus claims protect the structure (device, system); method claims protect the use; both can claim the same invention; method claims reach the act of performing the process, even using off-the-shelf equipment.

Method claim infringement requires that a single party perform each and every step of the claimed method: LITERAL INFRINGEMENT: the accused infringer must perform each step of the claimed method; any step not performed means no literal infringement; FUNCTIONAL EQUIVALENTS (DOE): the doctrine of equivalents can extend infringement to methods that perform a substantially equivalent step in a substantially similar way; Warner-Jenkinson v. Hilton Davis (S.Ct. 1997): DOE analyzed element-by-element (step-by-step for method claims); SINGLE-ENTITY REQUIREMENT: for direct infringement (§ 271(a)), a single entity must perform all steps; if two different parties each perform some steps, neither may be a direct infringer (this is the divided infringement problem); TEMPORAL/SEQUENCE ISSUES: if a step occurs before or after the claim's temporal window, infringement may be absent; if the claim requires 'simultaneously' performing steps, the steps must be concurrent; USE IN COMBINATION: a method claim is infringed every time the method is performed; if a product is sold to customers who then use it in the patented method, the manufacturer may be liable for induced or contributory infringement (not direct) if the customers are the direct infringers; EXTRATERRITORIAL LIMITS: direct infringement under § 271(a) requires all steps to be performed within the United States; if steps are performed in different countries, foreign steps may not count toward US infringement (but see § 271(f) and § 271(g)).

Divided infringement (also called joint infringement) occurs when the steps of a method claim are performed by multiple entities rather than a single entity: PROBLEM: if Party A performs Steps 1-3 and Party B performs Steps 4-5, and no single party performs all steps, there may be no direct infringer — making the patent unenforceable even if the claimed method is used in practice; PRE-AKAMAI STANDARD: the Federal Circuit required a 'direction or control' relationship — the defendant must direct or control the performance of the steps performed by the third party; MUNIAUCTION v. THOMSON (Fed. Cir. 2008): online auction system required users (third parties) to perform some claim steps; the court found no infringement because the defendant did not direct or control the users; AKAMAI TECHNOLOGIES v. LIMELIGHT NETWORKS (Fed. Cir. 2015 en banc): the Federal Circuit expanded the divided infringement standard; a party can now be directly liable for divided infringement when it: (1) DIRECTS OR CONTROLS the performance by another (traditional standard); OR (2) IS A JOINT ENTERPRISE with another performing the steps — i.e., has 'an equal right to direct' the enterprise; RECENT EXPANSION — OUTSOURCED TO THIRD PARTY WHO CANNOT AVOID: subsequent cases found direct infringement where a defendant conditioned participation in a service on the third party performing the claimed steps; if the defendant's business model requires users to perform steps as a condition of using the service, the defendant directs or controls those steps; INDIRECT INFRINGEMENT ALTERNATIVE: if divided infringement cannot establish direct infringement against any party, induced infringement may still apply if the defendant induces ALL steps to be performed (even by different parties).

Two specific statutory provisions extend method claim protection to activities with significant foreign components: 35 U.S.C. § 271(f) — EXPORTING COMPONENTS FOR COMBINATION ABROAD: makes it an act of infringement to supply from the US all or a substantial portion of the components of a patented invention to be combined abroad in a manner that would infringe if done in the US; NOTE: § 271(f) focuses on components of product patents; the Supreme Court in Microsoft v. AT&T (S.Ct. 2007) held that software transmitted electronically is not a 'component' under § 271(f) for purposes of product claims; 35 U.S.C. § 271(g) — IMPORTING PRODUCTS MADE BY PATENTED PROCESS: it is an act of infringement to import into the US, or sell, offer to sell, or use within the US, a product that was MADE BY A PROCESS PATENTED IN THE US; this provision directly addresses foreign use of patented process claims; LIMITS OF § 271(g): (1) 'MATERIALLY CHANGED' EXCEPTION: a product made by the patented process is not covered if it has been 'materially changed by subsequent processes' before importation; (2) 'TRIVIAL AND NONESSENTIAL COMPONENT' EXCEPTION: if the patented process product is only a trivial and nonessential component of the imported product, § 271(g) does not apply; PRACTICAL IMPORTANCE: § 271(g) is critical for pharmaceutical and chemical process patents; if a foreign company uses a US-patented process to make a drug or chemical, then imports the product, the US patent is infringed under § 271(g); WITHOUT § 271(g): the US process patent would be irrelevant to foreign manufacturing (direct infringement requires US performance); § 271(g) closes this gap.

Method and apparatus claims have different strengths and weaknesses depending on the technology and enforcement context: METHOD CLAIMS ARE STRONGER WHEN: (1) PRODUCT IS UNPATENTABLE BUT METHOD IS: if the end product is known (not novel) but the process of making it is new, only method claims are available; (2) DESIGNED-AROUND PRODUCTS: if a competitor changes the hardware slightly to avoid an apparatus claim, the method claim may still be infringed if the competitor's new hardware performs the same steps; (3) SOFTWARE/ALGORITHMS: abstract computational steps can be claimed as methods (when integrated into a practical application) even when apparatus claims might struggle with § 101 challenges; (4) REACH TO END USERS: a method claim reaches the person PERFORMING the steps; if end users perform the patented method, the patent owner can sue infringers who are the ultimate performers; (5) § 271(g) COVERAGE: method claims in manufacturing can reach importers of products made by the patented process; APPARATUS CLAIMS ARE STRONGER WHEN: (1) PRODUCT SALES ARE THE TARGET: apparatus claims are infringed upon sale or importation of the product — no need for the customer to use it in a specific way; (2) DIVIDED INFRINGEMENT AVOIDED: apparatus infringement requires only that one party make, use, sell, or offer to sell the apparatus; method claims require performing all steps (divided infringement risk); (3) EASIER TO DETECT: infringement of apparatus claims is detectable by inspecting the product; method infringement may require observing the process, which is harder to detect; STRATEGIC BEST PRACTICE: draft BOTH method and apparatus claims for the same invention whenever possible; this maximizes coverage and enforcement options.