Thursday, January 20, 2011

Use of Invention

  • We hold 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.
  • We agree that direct infringement by “use” of a system claim “requires a party . . . to use each and every . . . element of a claimed [system].” In order to “put the system into service,” the end user must be using all portions of the claimed invention.
  • By causing the system as a whole to perform this processing and obtaining the benefit of the result, the customer has “used” the system under § 271(a). It makes no difference that the back-end processing is physically possessed by [another party].

Wednesday, January 5, 2011



  • "A motion to transfer under § 1404(a) calls upon the trial court to weigh a number of case-specific factors relating to the convenience of the parties and witnesses, and the proper administration of justice, based on the individualized facts on record."

  • "In In re Zimmer Holdings, Inc., 609 F.3d 1378 (Fed. Cir. 2010), we held that the transfer of documents to a com-pany’s offices in anticipation of litigation rather than to litigation counsel was a distinction without a difference for purposes of a § 1404(a) analysis. Id. at 1381. We further explained that, similar to Allvoice’s offices here, the offices in Zimmer staffed no employees, were recent, ephemeral, and a construct for litigation and appeared to exist for no other purpose than to manipulate venue. Id. The only added wrinkle is that Allvoice took the extra step of incorporating under the laws of Texas sixteen days before filing suit. But that effort is no more meaningful, and no less in anticipation of litigation, than the others we reject."
  • Granting petition for a writ of mandamus and ordering transfer. See also In re Nintendo Co., 589 F.3d 1194 (Fed. Cir. 2009); In re Hoff-mann-La Roche Inc., 587 F.3d 1333 (Fed. Cir. 2009); In re Genentech, Inc., 566 F.3d 1338 (Fed. Cir. 2009); In re TS Tech USA Corp., 551 F.3d 1315 (Fed. Cir. 2008).