Product Claims vs. Method Claims

The fundamental difference between product and method claims lies in WHAT they protect: PRODUCT CLAIMS (also called apparatus or composition claims): a product claim covers a THING — an article, apparatus, device, or composition defined by its structural features, components, or composition; examples: 'A widget comprising: a cylindrical housing having an inner diameter of 5-10 mm; a motor disposed within the housing...'; 'A composition comprising: compound A in an amount of 10-30 wt%; compound B in an amount of 5-20 wt%; ...'; 'A system comprising: a processor; a memory storing instructions that, when executed by the processor, cause the processor to perform...'; INFRINGEMENT OF PRODUCT CLAIMS: making, using, selling, offering for sale, or importing the claimed product in the US infringes a product claim; each of these is an independent act of infringement; direct infringement of a product claim does not require any mental state (intent, knowledge); 'innocent infringement' is a defense only to enhanced damages, not to liability; METHOD CLAIMS: a method claim covers a PROCESS — a series of steps performed to achieve a result; examples: 'A method of forming a widget comprising: heating material to a temperature of 400-600°C; pressing the heated material into a mold under 100-500 MPa...'; 'A method of treating a patient with condition X comprising: administering to the patient an effective amount of compound A; ...'; INFRINGEMENT OF METHOD CLAIMS: performing all steps of the method in the US infringes a method claim; selling a product that is useful for performing the method does NOT infringe the method claim (no direct infringement); the seller may be liable for induced infringement (§ 271(b)) if the seller actively encourages others to use the product in the patented method with knowledge of the patent; WHICH IS BETTER: neither is universally superior — the best patent portfolios have both; each type covers aspects of the invention that the other type cannot.

The infringement analysis for product and method claims differs dramatically, especially on the question of WHO infringes: PRODUCT CLAIM INFRINGEMENT — WHO CAN INFRINGE: any single actor who makes, uses, sells, offers for sale, or imports the patented article directly infringes; there is NO divided infringement problem for product claims; EXAMPLE: if patent claim 1 covers a widget (product claim), Company A infringes by: making the widget; Company A also infringes by: selling the widget; the retailer who sells the widget to consumers also directly infringes; METHOD CLAIM INFRINGEMENT — THE DIVIDED INFRINGEMENT PROBLEM: method claims require that ALL STEPS of the method be performed; direct infringement of a method claim requires that a single actor performs ALL steps; if Step 1 is performed by Company A and Step 2 is performed by Company B (a customer or partner), NEITHER party directly infringes — this is divided infringement; AKAMAI TECHNOLOGIES v. LIMELIGHT NETWORKS (Fed. Cir. 2015 en banc): the Federal Circuit addressed divided infringement; held that all steps are 'attributable to a single entity' when: (1) one party directs or controls the others' performance; OR (2) the parties form a joint enterprise; WHAT IS DIRECTION OR CONTROL: a party 'directs or controls' another when: it conditions the other's participation or receipt of a benefit on performing the step; AND the manner and timing of the step is established by the directing party; PRACTICAL IMPLICATION FOR CLAIM DRAFTING: if your method claim has steps that different parties naturally perform, divided infringement may defeat the claim; restructure the claim so that ALL steps are performed by a single actor type (e.g., all steps performed by 'the server,' or all steps performed by 'the user'); alternatively, draft a system claim that covers the hardware performing all functions; PRODUCT CLAIM DETECTION OF INFRINGEMENT: a patent owner can purchase the accused product and test it to verify infringement; enforcement is straightforward; METHOD CLAIM DETECTION: the patent owner must somehow learn WHEN and IF a potential infringer is performing all the method steps; this can be harder — sometimes impossible without discovery in litigation; CONTRIBUTORY INFRINGEMENT (§ 271(c)): selling a component that is especially made for use in practicing a patented method AND is not a staple article of commerce may constitute contributory infringement even without performing the method steps; this requires the component to have no substantial non-infringing use.

CRM claims are a hybrid product/method claim type that bridges the gap between product and method claims for software inventions: DEFINITION: a CRM claim covers a non-transitory computer-readable medium storing instructions that, when executed by a processor, cause the processor to perform a method; EXAMPLE: 'A non-transitory computer-readable medium storing instructions that, when executed by a processor, cause the processor to: receive input data from a sensor; apply a machine learning model to the input data; output a prediction based on the model output'; WHY CRM CLAIMS ARE VALUABLE — THEY AVOID DIVIDED INFRINGEMENT: for software inventions, the steps of a method are typically performed by a single computer or system; however, if a method claim says 'a user performs step A and a server performs step B,' divided infringement problems arise; a CRM claim instead covers the MEDIUM (the hard drive, flash memory, or other storage) containing the instructions — this is a product, not a method; any party who makes, uses, sells, or imports the CRM directly infringes — even if the end user runs the software and the software developer never ran it; WHY CRM CLAIMS ARE IMPORTANT IN LITIGATION: in software patent litigation, the accused infringer often argues that it only wrote the software (made the CRM) and the user runs it; a CRM claim directly covers the manufacturer's activity (distribution of the software) even if the manufacturer never runs the software itself; SYSTEM CLAIMS vs. CRM CLAIMS: system claims ('a system comprising: a processor; a memory...') and CRM claims both cover the physical embodiment of software; system claims cover the hardware configured to execute; CRM claims cover the storage medium with the instructions; in practice, a well-drafted software patent has claims in ALL forms: system claims, method claims, AND CRM claims; PATENTABLE SUBJECT MATTER NOTE: CRM claims are still subject to the § 101 Alice/Mayo analysis; a CRM claim for an abstract idea implemented on generic hardware will be rejected or invalidated under § 101 just like any other software claim; 'NON-TRANSITORY' LANGUAGE: always say 'non-transitory computer-readable medium' — this specifically excludes transitory electrical signals (carrier waves), which the USPTO has ruled are not patent-eligible under § 101; MARKING REQUIREMENT: a CRM is a product — § 287 marking applies if the patent owner makes and distributes the CRM (e.g., a physical DVD or USB drive); for software distributed over a network with no physical medium, the 'article' that would need to be marked may be unclear — consider how the product is actually distributed.

The strongest patent portfolios routinely include both product and method claims for the same invention, plus system and CRM claims for software/hardware inventions: REASONS TO INCLUDE PRODUCT CLAIMS IN EVERY PORTFOLIO: (1) INJUNCTION LEVERAGE: courts can enjoin a defendant from making, using, selling, or importing the patented product — this is the strongest remedy in patent law; a method claim only enjoins performance of the method, not sale of a product that could be used for non-infringing purposes; (2) EASE OF DETECTION: patent owner can buy the accused product and compare it to the claims without needing to observe the infringer's internal processes; (3) MULTIPLE INFRINGING ACTS: making, selling, AND using are each independent acts of infringement; sellers, manufacturers, and importers all directly infringe product claims; (4) DAMAGES: each sale of an infringing product can be a separate act of infringement for damages calculation; REASONS TO INCLUDE METHOD CLAIMS IN EVERY PORTFOLIO: (1) COVERS USE OF PRODUCTS BY OTHERS: even if a competitor redesigns its product to avoid the product claims, if the product is still used in the patented method, the method claim captures that use; (2) COVERS IMPORTED PRODUCTS USED DOMESTICALLY: a product assembled abroad and imported may avoid product claim infringement if it is not 'made in the US'; if it is then used in the US to practice a method, the method claim is infringed; (3) NO MARKING REQUIRED: method claims have no § 287 marking requirement; damages run from the date of infringement, not from the date of actual notice; (4) PREVENTS WORKAROUNDS: design-arounds often redesign the physical product while preserving the functionality; method claims based on function can survive structural design-arounds; PRACTICAL PORTFOLIO CONSTRUCTION FOR A HARDWARE/SOFTWARE PRODUCT: Independent Claim 1 (apparatus/system): covers the device itself; Independent Claim 2 (method): covers the process of using the device; Independent Claim 3 (CRM or non-transitory computer-readable medium): covers the software embodiment; Independent Claim 4 (method of manufacturing): covers the process of making the device; Multiple dependent claims under each independent claim at narrower scope levels; CLAIM SCOPE CALIBRATION: the independent claims should be as broad as the prior art allows; the dependent claims add specific features that provide narrower fallback positions.

The difference in marking requirements between product and method claims is one of the most practically important distinctions between the two claim types: THE RULE: 35 U.S.C. § 287(a) requires patent owners who make or sell a 'patented article' to mark that article with the patent number; PRODUCT CLAIMS: if a patent contains product claims AND the patent owner (or its licensees) makes, sells, or imports the patented product, marking is REQUIRED to recover pre-notice damages; failure to mark means damages only accrue from the date of actual notice; METHOD CLAIMS: 35 U.S.C. § 287(a) by its terms does NOT apply to method patents; the statue applies to 'patented articles' — a method is not an article; for method-only patents, the patent owner can recover damages from the date infringement BEGAN, without any marking; THE MIXED PATENT PROBLEM: most product patents also include method claims for using the product; for patents with BOTH product and method claims, the Federal Circuit has held: if the product covered by the product claims is made or sold, the § 287 marking requirement applies to those product claims; AND if the product is not marked, the patent owner cannot recover pre-notice damages for EITHER the product claims OR the method claims in the same lawsuit; the theory is that the patent owner should not be able to circumvent the marking obligation by framing infringement under the method claims when the same underlying conduct would infringe the unmarked product claims; STRATEGIC IMPLICATION: if you want method claims to provide damages from day one without any marking requirement, consider whether the method claims in your patent are linked to the same physical product covered by the product claims; if so, you need to mark the product OR accept that damages run only from actual notice; if the method claims cover a different activity not tied to a specific physical product, the marking limitation may not apply; EXAMPLE: a patent for a data processing algorithm with only method claims (no product claims) — no marking requirement; if the same inventor adds system and CRM product claims to the same patent — marking of distributed software becomes a question.