Last Month at the Federal Circuit
Last Month at the Federal Circuit

February 2011

Spotlight Info

In Centillion Data Systems, LLC v. Qwest Communications International, Inc., Nos. 10-1110, -1131 (Fed. Cir. Jan. 20, 2011), the Federal Circuit defined “use” under 35 U.S.C. § 271(a) for system and apparatus claims involved multiple actors.  Centillion Data Systems, LLC’s (“Centillion”) U.S. Patent No. 5,287,270 (“the ’270 patent”) discloses and claims a system for presenting information to a user comprising four components.  Three of the components were allegedly included in the “back-end” of the defendants’ (collectively “Qwest”) billing systems, while the fourth was allegedly Qwest’s customers’ personal computers with downloaded software provided by Qwest.  The Federal Circuit noted that it had never directly addressed the question of infringement for “use” of a system claim that includes elements in the possession of more than one actor.  Relying on its decision in NTP, Inc. v. Research In Motion, Ltd., 418 F.3d 1282 (Fed. Cir. 2005), the Court held that “to ‘use’ a system for purposes of infringement, a party must put the invention into service, i.e., control the system as a whole and obtain benefit from it.”  Slip op. at 8.  While the “control” contemplated in NTP and by the Court’s definition of “use” for system claims “is the ability to place the system as a whole into service,” it does not require “exercis[ing] physical or direct control over each individual element of the system,” as the district court had required.  Id.  Thus, the Court concluded that Qwest’s customers put the system as a whole into service—controlling and obtaining a benefit from the system.  Accordingly, the Federal Circuit vacated the district court’s SJ of noninfringement and remanded for further consideration by the district court since the district court had not compared Qwest’s accused systems to each and every element of the claimed system.