Selling Disabled Software Code Is Not Direct Infringement - Mikkelsen Graphic Engineering, Inc. v. Zund America, Inc.

April 29, 2011

On April 7, 2011, the United States District Court for the Eastern District of Wisconsin denied plaintiff's motion for summary judgment of direct infringement. Plaintiff's patent, focused on graphics cutting, contained method claims that the district court concluded were not directly infringed. The district court concluded that even if defendant's software product contained an infringing search function, there was still no direct infringement because the defendant disabled that function when it sold the software. The district court reached this conclusion even though a user or customer could enable the infringing function. "[T]he question is whether the claims read on a device that contains source code for searching, even if that code has been disabled. . . . Nothing in [plaintiff's] apparatus claims suggests that a device that contains disabled source code for searching is within the scope of the claims. The claims are not drafted in terms of software components but in terms of the actual function of the apparatus. . . . When the code for searching is disabled, the device does not perform [plaintiff's] methods, and thus sales of the device with the code for searching disabled is not direct infringement."

This type of decision once again heightens the importance of including apparatus claims that closely track the method claims, if possible. Here, an apparatus claim was included but it was significantly different than the method claim. An apparatus claim that tracked the method claim would likely have survived the analysis of the district court.

The case is Mikkelsen Graphic Engineering, Inc. v. Zund America, Inc., Case No. 2-07-cv-00391 (E.D. Wis. April 7, 2011 (Adelman, J.)

______________________________

The authors of www.PatentLawyerBlog.com are patent litigation lawyers at Jeffer Mangels Butler & Mitchell LLP. We represent inventors, patent owners and technology companies in patent licensing and litigation. Whether pursuing patent violations or defending infringement claims, we are aggressive and effective advocates for our clients. For more information contact Stan Gibson at 310.201.3548 or SGibson@jmbm.com.