In claim drafting, like the song says, “little things mean a lot.” (Mikkelsen Graphic Engineering Inc. v. Zund America, Inc.)
Mikkelsen is the owner of two patents directed to improvements in “graphics-cutting vision systems,” which are systems for mechanically cutting decals or other graphics areas from sheets of material. These systems typically consist of a cutting table, which accepts a sheet of material on which the graphics to be cut have been printed, and a cutting tool movably attached to the table and displaced under the control of an appropriately programmed computer.
To prevent improper cutting, such systems use a sensor or camera to determine whether the sheet has been distorted or incorrectly positioned. If the system detects a problem, it adjusts the pre-programmed cutting path to compensate for the distortion or incorrect placement. The patents claim improved methods and apparatus for detecting and adjusting for such problems by searching for “reference features” printed on the sheet.
Mikkelsen sued Zund, alleging infringement of the two graphics-cutting vision patents. The accused systems admittedly included a cutting table and a computer-controlled cutting tool. In response to the suit, however, Zund had “disabled” the search function of the software so that the system could no longer search for “reference features” on the sheet of printed material. Zund asserted that systems with “disabled” software did not infringe the patents-in-suit.
Not surprisingly, Mikkelsen maintained that systems with “disabled” software still infringed. Mikkelsen pointed out that “a user need only change a ‘no’ to a ‘yes’ in two different lines” of computer code to re-enable the search function and contended that an accused product “need only be capable of operating” in an infringing manner in order that sale of that product constitute a direct infringement.
The Court determined that the issue was “whether the claims [of the patents-in-suit] read on a device that contains source code for searching, even if that code has been disabled. Having so framed the issue, the Court found in favor of Zund. “The claims are not drafted in terms of software components but in terms of the actual function of the apparatus. In other words, the apparatus claims specify a device that performs Mikkelsen’s methods, not a device that contains software code for performing Mikkelsen’s methods.” Mikkelsen was defeated by its unfortunate choice of claim language.
THE LESSON TO BE LEARNED: “[f]or a claim to be drawn to capability, the claim language must specify a product that is capable of performing a particular function or operation, not merely a device that actually performs that function or operation.”