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
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
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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