The Software IP Report

Software’s Capability to Infringe Is Not Patent Infringement

By Charles Bieneman

Categories: Patent Infringement, Software Patents, The Software IP Report

A claim for direct patent infringement could not be sustained where Microsoft software, even under the plaintiff’s theory of infringement, would have required additional user configuration before all claim elements were met.  Parallel Networks Licensing LLC v. Microsoft Corp., No. 1-13-cv-02073 (D. Del. April 10, 2017). The court initially granted summary judgment because the plaintiff had been untimely in introducing its new theory of direct patent infringement, but then explained that summary judgment was independently warranted because the plaintiff’s claim of direct infringement was unsupported by the plaintiff’s own theory of the facts.

The independent claims of US Patent No. 5,894,554 at issue were claims 20 and 46, each directed to “a machine readable medium having stored thereon data representing sequences of instructions” that caused a computer to perform certain recited steps. Agreeing with Microsoft’s argument that an expert report “introduced an entirely new damages theory based on an entirely new theory of direct infringement,” the court granted summary judgment on this theory of infringement because it was untimely.

But more interestingly, the court further explained that it would have granted summary judgment of no direct patent infringement anyway. This was because

there is no dispute that the Windows Server software, as sold, does not have “data representing sequences of instructions” that, when executed, would perform each of the steps in the asserted claims.

Instead, Windows Server required configuration before use, including a user selection of the functionality in question, specification of a specific algorithm, and input of “a mapping between different servers/server groups and the various Webpages one is hosting.” Consequently, Windows Server’s stored “sequences of instructions” required a user to provide “additional information or instructions” before the Windows Server product could “have the potential to perform each of the limitations in the asserted claims.”

The court went on to reject the plaintiff’s assertion “that a party directly infringes a patent simply by storing to component parts of infringing product, or

if the party ( 1) sells a self-standing product that is also a component of an infringing product and (2) makes available the second component of the infringing product as an optional extension to the first component.

Under Deepsouth Packing Co. v. Laitram Corp., 406 U.S. 518, 526-29 (1972), which the court characterized as “still good law,” elements manufactured or sold separately that were “capable of being, but never actually, associated to form the invention” could not result in direct patent infringement. The court rejected the argument that “Microsoft directly infringed the asserted claims even though” it “did not assemble the software components into the accused product.”

Further, Paper Converting Machine Company v. Magna-Graphics Corp., 745 F.2d 11 (Fed. Cir. 1984), was distinguishable. The components in that case could not be used “independent of the infringing product.” The Windows Server components at issue here, on the other hand, could be used in a non-infringing context.


This case is analogous to divided patent infringement cases, where the lack of a single direct infringer can defeat a patent infringement claim.  There are drafting techniques to combat divided infringement problems.  For example, even though system and method claim are treated differently, one good rule is to try to draft a claim from the viewpoint of a single party likely to infringe.  In this case, by contrast, the plaintiff had accused a single party of infringement, but that single party still could not, according to this court, have been a direct infringer.  The best lesson in this case, therefore, may be for patent infringement defendants, and not plaintiffs: here is a subtle, but possibly effective, potential defense.