In Typhoon Touch Technologies, Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011), the Federal Circuit affirmed a finding of noninfringement where the patent claims relied on functional limitations and the accused device did not actually carry out the functions, but was merely capable of being programmed or configured to do so.
The patents owned by Typhoon claimed priority back to an application filed in 1988, disclosing a now rudimentary form of a touch screen computer designed for collecting data. Through a series of abandoned continuing applications, the patent applicants obtained seemingly broad claims in 1995 and 1997 (US Pat. Nos. 5,379,057 and 5,675,362). The claims obtained were apparently intended to capture the latest developments in touch screen technology. However, the claims relied substantially on functional limitations (i.e., claims directed to the function of the device as opposed to the structure of the device).
A non-practicing entity (Typhoon) acquired the patents and filed the present suit after a period of 10 years where no attempt to enforce the patent occurred. Meanwhile, in that 10 years touch screens became increasingly present in consumer electronics. Ultimately, in the underlying district court case, the parties stipulated to a finding of non-infringement if the district court's claims construction of certain functional terms was adopted.
On appeal, the Federal Circuit recognized from prior decisions that apparatus claims may appropriately use functional language. However, the court reasoned that those prior decisions did not deal with the situation in which an apparatus does not perform the function stated in the claim unless the apparatus is specifically so programmed or configured. Relying on other precedent, the Federal Circuit rejected the proposition that infringement may be based upon a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent.
The Federal Circuit affirmed the claim construction of the district court, requiring that a device, to be covered by the claim, actually performs, or is configured or programmed to perform, each of the functions stated in the claim. Typhoon argued to no avail that such a construction essentially added a use requirement to an apparatus claim. The necessary result due to the parties’ stipulation was finding non-infringement.