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This question might be too detailed for this site, but I will give it a shot...

This question relates to divided infringement and when a method claim will have multiple actors.

Consider the following claims:

  1. A method comprising: a customer sending an unpainted item to a painter, the painter painting the item, and the painter sending the painted item to the customer.

  2. A method comprising: a customer sending an unpainted item to a painter, wherein the painter paints the item and sends it to the customer.

  3. A method comprising: a customer sending an unpainted item to a painter, and the customer receiving the item from the painter, wherein the received item was painted.

  4. A method comprising: a customer sending an unpainted item to a painter, and the customer receiving a painted item from the painter.

Claim 1 is clearly divided infringement because there are two different actors performing explicit steps.

Claim 2 is pretty much the same thing, but the actions of the painter have been put into a "wherein" clause. It seems that this should also be divided infringement but I haven't found a case addressing this. Is there any law addressing this?

Claim 3 is trickier. Now the wherein clause describes the item but that description requires that someone performed an action on the item. If the painter painted the item, is this divided infringement?

Claim 4 seems to have virtually identical meaning to claim 3, but I would say that claim 4 is not divided infringement even if the painter had painted the item.

How does one draw the line for divided infringement for the above claims?

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Claims 1 and 2 allow for divided infringement. Claims 3 and 4 put all the actions on the "customer" (he/she has all the gerunds) and are not susceptible to being accomplished in a divided manner. If one is very worried about divided infringement, claim 4 is more clearly in the clear. In claim 3 the fact that the painter has caused an item to be painted in brought in inferentially. That should make it not an element of the claim.

  • Thanks George, that makes sense, but do you know of any case law or other authority to support that? – gaefan yesterday
  • I can point you at a couple of resources. One in a few pages excerpted from Landis on Mechanics of Patent Drafting Farber - 5th edition find the word gerund. djstein.com/IP/Files/Landis%20on%20Mechanics% 20of%20Patent%20Claim%20Drafting.pdf . Also you might look up inferential claiming. – George White yesterday
  • What you're looking for is called "claim construction". The meaning of claims (and who is performing each step) is "a question of law" that is for a judge to decide during a "Markman Hearing" -- this is opposed to "questions of fact" for a jury to decide. The judge hears both sides, looks at evidence, and makes a determination of the meaning of the claims (including who is performing the steps). – Chris 13 hours ago
  • For a recent case on what "claim construction" means, look at [In re Papst Licensing Digital Camera Patent Litigation (Fed. Cir. 2015)]. – Chris 13 hours ago
  • The Court of Appeals for the Federal Circuit (CAFC) stated that "We generall give words of a claim their ordinary meaning in the context of the claim...". You can read the rest in the appeal decision for the details. – Chris 13 hours ago
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Divided infringement? I'm having a hard time seeing how these claims even fit into a statutory class. A method (or process) must comprise steps or acts to be carried out. "a customer sending an unpainted item to a painter" is just a set of circumstances rather than a step or act to be carried out. To write it as a step, simply write "sending an unpainted item to a painter" (a step that can be carried out by the customer). If you rewrite all the claims this way, you'll see that the issues are dramatically simplified.

Instead of "a customer sending an unpainted item to a painter, wherein the painter paints the item and sends it to the customer", say "(a) receiving an unpainted item from a customer, (b) painting said item, and (c) sending said item to said customer" -- this way the painter infringes. However, I'd avoid "receiving" snail mail as an act if possible (because, typically, the recipient doesn't "do" anything to receive snail mail). Perhaps I'd phrase it as "(a) painting an item received from a customer, and (b) sending said item to said customer".

  • I fully appreciate realize that the claim can be rewritten to have only a single actor. The point is to understand the law better. In my view, the claim limitations are steps. More typically you would write, "sending, by a customer, ..." but I'm just trying to keep the language simple. – gaefan Aug 12 '15 at 12:52
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    @Kekito Well it appears we disagree as to whether these are method/process steps. My position is that "sending, by mail, ..." can be a step and "sending, by a customer, ..." is a step only to the extent that it can be parsed in the same form and construed to mean sending my means of a customer. – Atsby Aug 13 '15 at 0:02
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First, the "claim" only describes a series of events, not any specific method. Let's say the claim is more specific:

A method of painting outsource comprising means of packaging an electronic template and a reference photo in a container, means of depositing and withholding a payment, means of dispatching the container to a service provider, means of verification of the service executed by the service provider, and means of dispatching the payment to the service provider.

There could actually be 3 players: the provider of the method, the customer, and the painter. Both the customer and the painter are "users".

In this case, any or all three of the actors could be sued for infringement. On USPTO's About Patent Infringement? page, there is a section on "The basis of the demand letter appears to be my use of another’s product. How can that be, and what should I do?" There also appears to be an increasing trend of user being sued.

  • The example is not in the form of a comprehensive claim. The "means of" makes it very confusing. "means" is generally a stand in for a noun, a thing. If it said "step of", then it could be a method claim. In all three steps, the actor(s) are the packager, the depositor , verifier, and the dispatcher. If one person does all those things you have a single actor who you sue for infringement. If more than one person does a step, you have divided infringement - (with a caveat) – George White yesterday

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