Infringing “Use” of Claimed System Requires “Control” and “Benefit” of Each Claim Element

In Intellectual Ventures I LLC v. Motorola Mobility LLC, No. 16-1795 (Fed. Cir. Sept. 13, 2017), the Federal Circuit (among deciding other issues) reversed the district court’s order denying JMOL of noninfringement, holding that there was not substantial evidence to support a jury verdict that Motorola’s customers directly infringed an asserted claim by “using” the Motorola’s devices. Intellectual Ventures asserted that Motorola’s customers’ use of Motorola’s devices directly infringed its claim directed to a “communication device” including an “authenticating device” that “generate[s] a delivery report.” A jury found direct infringement and the district court denied Motorola’s motion for JMOL of noninfringement. Motorola appealed.

On appeal, the Federal Circuit held that Motorola’s customers did not directly infringe this system claim because there not substantial evidence to show that they “used” the “authenticating device” to generate the claimed delivery reports. The court explained that direct infringement by “using” a claimed system requires a patentee to show both “control” and “benefit” of each claim element by the alleged infringer. The court then observed that Intellectual Ventures failed provide evidence that Motorola’s customers generated the claimed “delivery reports,” received the “delivery reports,” or benefitted from those reports. Accordingly, Intellectual Ventures did not set forth evidence showing that the customers “used” the “authenticating device” as claimed. The court then held that substantial evidence did not support the jury’s infringement finding and reversed the district court’s denial of JMOL of noninfringement.