Can a disabled functionality within a product infringe a patent? The answer depends, of course, on how the patent is worded, as noted by the Federal Circuit in several instructive cases.

In Fantasy Sports Properties, Inc. v. Sportsline.com (2002), software for operating a fantasy football league and awarding bonus points for unusual plays was found to infringe a device claim, which recited “means for scoring … wherein [players] receive bonus points.” The recited means were found to be present in the accused software even though users of the software had to configure the software so that it would award the bonus points.

What if a device, such as a lock or a computer program, is capable of operating in two modes, only one of which infringes a claim? The question of infringement depends on whether the claim requires actually performing the recited operations or merely the capability of operating in the proscribed way.

Method claims require actually performing the recited steps. If one or more steps are not performed as recited or at all, the claim is not infringed. For example, in Southwest Software, Inc. v. Harlequin Inc. (2000), a manual operation of selecting a calibration set used to provide accurate gray tones on computer screens avoided infringing a method claim, because the claim required selecting the calibration set automatically by a computer program.

On the other hand, a carefully worded claim can cover a device based on the device’s capabilities, even if it is not actually used in a proscribed way, and even if the device is locked to prevent such operation. In Finjan, Inc. v. Secure Computing Corp., decided in November 2010 by the Federal Circuit, a virus-detection software module that was locked and required a software key to enable was nonetheless covered by a device claim that recited “a logic engine for preventing execution of [a suspicious software module].” The court ruled that software written to serve that purpose was infringing, even if that functionality was not active in the software as it was deployed.

This is because the claim recited elements in terms of capabilities, and all the recited elements were present in the accused software. Even though other portions of the software were operable without a key and without infringing any claim of the patent, the locked module was sufficient to infringe the patent. In other words, a device that is capable of being used in a non-infringing way is not necessarily immune to infringement.

On the other hand, a claim that is cast in terms of one particular mode of operation, rather than a capability of operating in that mode, may not cover alternative modes of operation. In Acco Brands, Inc. v. ABA Locks Manufacturer Co., Ltd. (2007), a device claim for a personal-computer lock required a pin to extend through a security slot in the computer after a slot engagement member had been rotated to its locked position. However, the accused lock could be used in another mode that involved pressing the lock into the slot, without rotating the slot engagement member.

The accused lock’s vendor instructed users to operate the lock in the non-infringing manner. For this reason, the accused lock did not necessarily include all the claim elements and limitations and, consequently, did not infringe the claim. In other words, hypothetical instances of infringement are insufficient to establish infringement liability.

Sometimes claims have to be narrow to avoid prior art. However, whenever possible, claims should be broadly directed to capabilities, without being restricted to a single mode of operation. Although method claims are attractive for a variety of reasons, method steps must be actually performed to infringe. Therefore, patents should also include device claims, whenever possible.

Knowledgeable counsel can suggest claiming strategies aimed at covering inventions broadly and catching the “bad guys,” be they manufacturers, distributors or end users.