There are many reviewers and pundits who have discussed the recent Supreme Court case of Microsoft v. ATT, which dealt with a patent that Microsoft admitted to contributory infringement. This meant that Microsoft’s software enabled someone else to infringe, but that Microsoft itself did not directly infringe. The question was whether or not Microsoft was to be liable for infringement outside the US because Microsoft sent master copies of infringing software overseas for copying and foreign distribution and whether that action amounted to infringement.
The court decided that Microsoft was not liable because Microsoft did not export the copies of Windows installed on the foreign made computers. Instead, Microsoft supplied a master from which copies were made.
This is a very, very fine distinction.
Microsoft was an admitted contributory infringer, not a direct infringer. Direct infringement is usually a clear cut issue, but contributory infringement is a matter of degree. The farther away a contributory infringer is from the infringement, the less potential culpability.
Looking at the litigated patent (RE 32,580) from a patent practitioner’s standpoint, there is something glaringly missing in the patent itself: a Beauregard claim. Beauregard claims were not litigated and declared legal until 1995 and the Reissued patent 32,580 in the Microsoft v. ATT case was issued in 1988, meaning that Beauregard claims were not available to the drafters and prosecutors of the patent at issue in this case.
A Beauregard claim is used in a computer implemented method claim to claim the physical medium. Pure software that can perform a method does not infringe a patented method, but is infringing only when the software is executed. Thus, a software manufacturer can only be held liable for contributory infringement.
The Beauregard claim makes the software itself patented and a software developer a direct infringer rather than a contributory infringer.
Here is an example of a Beauregard claim (claim 2):
1. A method comprising:
performing step 1; and
performing step 2.
2. A computer readable medium comprising computer executable instructions adapted to perform the method of claim 1.
Had the drafter of the ATT patent been able to include a Beauregard claim, Microsoft would have been a direct infringer rather than a contributory infringer and would have been liable for whatever millions of dollars are at stake here. One additional claim would have brought millions of dollars into the coffers of the patent holder.