The first two parts of this trilogy dealt with infringement issues relating to who performs the steps set forth in a method claim and whether one who domestically produces a device contributes to infringement by one using the device abroad. Does infringement occur when the steps of a single method claim are performed by different parties? Does it occur if the method is practiced abroad utilizing equipment exported from this country? (If the reader cannot stand the suspense, the answers are, respectively, “it depends” and “no.”) The question now to be addressed is whether a method claim, directed to a computer-implemented invention, is infringed through domestic use, when the host servers are offshore. The answer is “no” (bad news for patentees), see Renhcol Inc. v. Don Best Sports, et al. To infringe a method claim of a U.S. patent, all of the steps must be performed in this country.
However, the same use was held to constitute infringement of article claims in the same patent (good news for patentees).
THE LESSON TO BE LEARNED: Don’t let some slimeball avoid infringement by moving its server offshore. Patents directed to computer-implemented methods should include both article (system) claims and method claims.
This is an excellent trilogy on patent infringement. I appreciate you sharing your wealth of information on this subject.
This is fantastic information on patent infringement.
I like how you add "The Lesson to be Learned" after each of your blogs to further help the reader understand patent information.
This is excellent news that a slimeball as you say, cannot move its server offshore to avoid patent infringement. That is ridiculous that a person should be able to do that.
Article/System claims and method claims on patent infringement is an excellent lesson to be learned.
Corporations are not natural persons and thus they cannot invent or directly get a patent. The true human inventor "assigns" his/her patent rights over to the corporation by way of contract. Even then, the name(s) of the human inventors must be listed on the face of all US patents because it is a vital part of US patent law to give due attribution to the true inventors for having originated the work product and thus contributed to the general welfare of the nation.With that said, it should be observed that few originating inventors, even in large corporations, actually "practice" their own inventions. It is only after having purchased/taken the patent rights from the original non-practicing inventors (NPEs) by way of assignment that the corporation doles out the task of actually "practicing" the invention to other members of the corporate body.