Method Claims

Method (process) claims protect the steps of performing an activity, not a physical object: LEGAL BASIS: 35 U.S.C. § 101 lists four statutory categories: 'process, machine, manufacture, or composition of matter'; method/process claims are the 'process' category; WHAT A METHOD CLAIM COVERS: a sequence of steps; the claim is infringed when a person or entity performs all the claimed steps; the claim does NOT cover making or selling an apparatus, even if the apparatus is used to perform the method; STRATEGIC VALUE OF METHOD CLAIMS: (a) COVER SOFTWARE AND ALGORITHMS: software is more easily claimed as a method than as a physical device; 'a method comprising: receiving input; processing data according to algorithm X; outputting result' covers the software operation; (b) INDEPENDENT OF APPARATUS: a method claim covers whoever performs the method, regardless of what apparatus they use; if someone builds a new machine to perform your patented method, they still infringe; (c) COVER IMPROVEMENTS: a method of using an existing product in a new way can be patented; (d) SECONDARY MEANING: after a product patent expires, a related method patent may still be in force; (e) HARDER TO DESIGN AROUND: apparatus claims can sometimes be avoided by changing product structure; method claims require changing the entire process; TYPICAL CLAIM FORMAT: 'A method comprising: [step 1]; [step 2]; [step 3];' — each step should use present-tense active language ('receiving,' 'generating,' 'transmitting'); MULTI-STEP CLAIM STRUCTURE: at minimum one independent method claim; dependent claims add specific embodiments; consider both broad and narrow independent claims for different defense/prosecution purposes.

Method claim infringement requires performance of every claimed step: ALL-STEPS RULE: analogous to the all-elements rule for product claims; a method claim is only infringed if every step of the claim is performed; if any step is missing from the accused activity, there is no literal infringement; PROOF OF PERFORMANCE: the patent owner must show the defendant actually performed each step; this can be harder than for product claims (no physical product to inspect); evidence: source code analysis; technical documentation; expert testimony; testing; TIMING AND LOCATION REQUIREMENTS: § 271(a): infringement must occur 'within the United States'; all steps of a method claim must be performed in the US for § 271(a) direct infringement; NTP, Inc. v. Research In Motion (Fed. Cir. 2005): if any step is performed outside the US, no § 271(a) direct infringement even if results are felt in the US; DOCTRINE OF EQUIVALENTS FOR METHOD CLAIMS: applies claim-by-claim; function-way-result test for each step; prosecution history estoppel limits DOE scope for amended claim steps; INDIRECT INFRINGEMENT: § 271(b) inducement: if the defendant induces others to perform the method, liability exists even if defendant doesn't perform all steps personally; § 271(c) contributory infringement: providing a component that is used to perform a patented method step, if the component has no substantial non-infringing use; BEST FORM OF EVIDENCE: code review showing the steps are implemented; server logs showing execution; functionality testing demonstrating the steps are performed; expert analysis correlating claim language to software operations.

Divided infringement (joint infringement) occurs when no single entity performs all method claim steps: THE PROBLEM: a method claim covers steps A, B, and C; party X performs steps A and B; party Y performs step C; neither X nor Y alone infringes; traditional rule required single-entity infringement for § 271(a) direct infringement; MUNIAUCTION v. THOMSON CORP. (Fed. Cir. 2008): a defendant directly infringes a method claim only if it performs every step or exercises direction or control over parties performing the remaining steps; AKAMAI TECHNOLOGIES v. LIMELIGHT NETWORKS (Fed. Cir. 2015 EN BANC): the Federal Circuit expanded the standard for divided infringement; CURRENT STANDARD: direct infringement can be found where ONE ENTITY: (1) performs all steps of the claimed method; OR (2) as to steps performed by another, when EITHER: (a) the defendant directs or controls the other party's performance of the steps; OR (b) the parties form a joint enterprise (traditional agency-type relationship); DIRECTION OR CONTROL: contracts requiring the other party to perform the steps; providing software that automatically executes steps when used; conditioning receipt of benefit on performance of steps; providing detailed instructions with no meaningful alternative; JOINT ENTERPRISE: all parties must have: a common purpose; a community of pecuniary interest; equal right to control the enterprise; PRACTICAL APPLICATION: cloud computing: platform provider may directly infringe if its customers perform steps the provider mandates through API design; medical diagnostics: a lab performing testing steps for a doctor who orders the test may be jointly liable if the claim covers both steps; Akamai remand: Limelight was found to infringe because its customers performed steps Limelight directed through its standard content delivery protocol.

§ 271(g) extends the reach of US method patents to products made abroad by the patented process: § 271(g) TEXT: 'Whoever without authority imports into the United States or offers to sell, sells, or uses within the United States a product which is made by a process patented in the United States shall be liable as an infringer'; WHAT § 271(g) COVERS: a US patent on a manufacturing process covers products made by that process even if the manufacturing occurs outside the US; the infringement occurs at the point of US importation, sale, or use; WHY § 271(g) MATTERS: without § 271(g), a US manufacturer with a patented process for making compound X could be undercut by a foreign manufacturer using the same process; § 271(g) closes this loophole; particularly important for: pharmaceutical manufacturing processes; chemical synthesis processes; semiconductor fabrication processes; IMPORTANT LIMITATIONS: § 271(g)(1): no infringement if the product is 'materially changed by subsequent processes'; § 271(g)(2): no infringement if the product becomes 'a trivial and nonessential component of another product'; WHAT 'MATERIALLY CHANGED' MEANS: if the patented process makes compound A, and compound A is then converted to compound B through additional chemistry, compound B is materially changed; the transformation must be truly material — not cosmetic; PRACTICAL IMPLICATIONS: pharma: a patented synthesis route for an API is infringed by importing drugs made with that route abroad; however: the route must actually be used; generic manufacturer typically argues different synthesis routes; BURDEN OF PROOF: once the patent owner establishes that the product was made by the patented process, the burden shifts to the defendant to prove the product was materially changed or is only a trivial component.

Effective method claim drafting requires careful attention to structure and language: SUBJECT MATTER ELIGIBILITY CHECK: before drafting, apply Alice/Mayo two-step; method claims covering abstract mathematical operations on generic computers face § 101 rejection; frame the method as a technical improvement, not just an economic result; tie the steps to a specific technical mechanism or transformation; CLAIM STRUCTURE — INDEPENDENT CLAIM: 'A method comprising: [step 1 — broad]; [step 2 — broad]; [step 3 — broad];' — start maximally broad; each step is a limitation (adds to infringement requirement); STEP LANGUAGE BEST PRACTICES: use present participles: 'receiving,' 'generating,' 'transmitting,' 'determining'; avoid mixing method steps with apparatus language in the same claim (this creates claim interpretation problems); each step should be necessary (not merely incidental); avoid steps that require user mental activity ('deciding,' 'concluding') — harder to prove infringement; DEPENDENT METHOD CLAIMS: add specific embodiments; add specific values, algorithms, materials; create a dependent claim for each important commercial embodiment; CONSIDER PARALLEL APPARATUS CLAIMS: draft corresponding apparatus claims ('a system comprising...') with structure mirroring the method steps; different defendants may infringe different claim types; AVOIDING DIVIDED INFRINGEMENT RISK: draft the claim so that a single actor (the defendant) performs all steps; or draft to cover the entity who benefits (the 'orchestrator'); identify who in the target industry performs each step; MEANS-PLUS-FUNCTION IN METHOD CLAIMS: method claims can use means-plus-function language ('means for [step]'); but this limits claim to disclosed embodiments + equivalents; generally avoided in method claims; PROSECUTION CONSIDERATIONS: avoid unnecessarily limiting steps during prosecution; limit argument to the specific prior art; don't argue all possible ways of performing a step are covered if not supported by specification.