Some analysts predict the Internet of Things (IoT) market will grow from
nearly $2 trillion in 2013 to $7 trillion in 2020. With this rapid
growth comes new challenges for companies trying to protect and
enforce their patent rights. Of particular concern for IoT
companies is divided or joint infringement issues.
To prove infringement, a patent owner typically must show that a
single party sells a product or performs a process that meets all
elements of a patent claim. IoT inventions, however, often create
value for consumers by connecting disparate devices—usually
made by different entities—in creative ways.
For example, in an IoT smart home, entertainment systems,
lighting, appliances, climate control, and power meters may all
work together to optimize the home environment while minimizing
power consumption. In the real world, each of these devices could
be made, sold, or used by different entities. An IoT patent might
be directed to using all of these devices together in a novel way;
thus no single entity by itself practices the patented invention.
This situation is known as divided or joint infringement, which can
be difficult to prove.
Smart Home System
One way to mitigate or avoid divided infringement situations is
to draft patent claims from the perspective of only one device in
the IoT system, capturing only the entity that makes, uses, or
sells that device. In the above smart home example, that device
might be a novel internet server that receives data from the
different IoT home devices, analyzes the data, and provides
instructions to the devices controlling the home environment. But,
not all IoT devices lend themselves to this drafting technique. It
might only be possible to obtain a patent on the way that a
customer controls the entire system because that might be the only
novel aspect of the system. Even in this case, the patentee can
still show direct infringement of the claim by proving that the
customer "puts the system as a whole into service, i.e.,
controls the system and obtains benefit from
The patent owner can still prove infringement against another
entity, such as the service provider, by showing that the service
provider exercises sufficient control or direction over the entire
process such that its customer's use of the entire system can
be attributed to the service provider under a theory of induced
infringement. Induced infringement is a more difficult standard to
meet, but it is not impossible to prove.
As the IoT market continues to grow, protecting IoT inventions
will become ever more important. Keeping the above principles in
mind when drafting patent applications will help build a stronger
IoT patent portfolio or help defend against a weak one.
1 Centillion Data Sys., LLC. v. Qwest
Commc'ns. Int'l, Inc., 631 F.3d 1279, 1285 (Fed. Cir.
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guide to the subject matter. Specialist advice should be sought
about your specific circumstances.
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26 Apr 2017, Speaking Engagement, Boston, United States
Finnegan partner Linda Wadler will participate in a panel discussion exploring the rise in life science litigation at the Patent Trial and Appeal Board, unique aspects of these new proceedings for life science patents, and strategies for dealing with multi-front litigation at “Life Sciences at the PTAB,” hosted by the Boston Patent Law Association and the Boston Bar Association.
26 Apr 2017, Speaking Engagement, Chicago, United States
Finnegan partner Aaron Parker will present “Innovation: Managing Risks” and Kenie Ho will present “The Rise of the Virtual Trainer & Quantified Athlete” at Sports and Fitness Industry Association’s Litigation, Regulatory, and Risk Management Summit.
In Wasica Finance GmbH v. Continental Automotive Systems, Inc., No. 15-2078 (Fed. Cir. 2017), the patentee Wasica Finance discovered, among other things, the importance of using consistent terminology in the patent specification and claims.
While under attack for several years now, the patent infringement defense of laches was dealt a serious, and likely final, blow by the recent Supreme Court case of SCA Hygiene Products AB et al. v. First Quality Baby Products LLC et al.
Mintz, Levin, Cohn, Ferris, Glovsky and Popeo, P.C.
On April 6, 2017, the Federal Circuit reversed-in-part and affirmed-in-part the district court's judgment of infringement and summary judgment for non-infringement of The Medicines Company's ("MedCo") patents-in-suit.
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