Unused Capabilities of a Product Can Infringe Well Written Patent Claims

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 this Commentary, George Jakobsche discusses disabled functionalities and examines the relevant case law. He writes:

     In Fantasy Sports Properties, Inc. v. Sportsline.com, 287 F.3d 1108, 62 U.S.P.Q.2d 1564 (2002) [enhanced version available to lexis.com subscribers / unenhanced version available from lexisONE Free Case Law], 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.

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