Monday, June 28, 2010

Meaning of "providing" in a software claim

Takeaway: Before you use the word "providing" in your claim, think very carefully about how it might be interpreted, and about which entity will do the "providing" under those interpretations. Otherwise you risk the possibility of divided infringement, where the entity that provides is not the same as the entity that performs the other steps. And divided infringement is almost always fatal.

Details: Consider the limitation "providing to a user a thumbnail visual image of a web page." Does "providing" mean "supplying," "transmitting," or "displaying"?

In many situations, the answer to this question is dispositive to the question of infringement. A typical software architecture uses one or more servers to generate, store, and transmit the image, with a browser client displaying the image. Yet direct infringement requires a single entity perform all the claimed steps. If the other claimed steps read on actions performed by the server, but the "providing" step is construed as "displaying," then the claim may have no direct infringer.

This very issue came up in, Inc. v. IAC Search & Media, Inc. (D. Del., Civ. No. 07-787-SLR). The technology was briefly described by the court in an order denying a preliminary injunction, 2008 WL 5155622 (D.Del.):
[I]nstead of a standard search engine display consisting of a list of hyperlinks (known as the URL or "uniform resource locator" of a web page) and a brief description of the web page, the '904 patent describes a way of providing thumbnail visual images of the hyperlinked web pages along with the hyperlink.

The claim limitation at issue was "concurrently providing a thumbnail visual image of the home page of at least one web site which is represented by said at least one hyperlink via the Internet by employing an image server that stores and provides said thumbnail visual image."
The court's original claim construction order, 2009 WL 2949526 (D.Del.), construed "providing" to mean "supplying." One of the defendants advocated for "displaying," but the court saw two problems with that. First, claim differentiation: a dependent claim added "the thumbnail visual image is displayed." Second, the court looked to the image server phrase in the claim ("that stores and provides said thumbnail visual image”) and noted that "an image server cannot 'display' images itself, but it can 'supply' them." Finally, the references in the specification to providing "over the internet" indicated movement of content from a server to the client.

On reconsideration, the court changed its position, and ordered that “providing [to a user] a thumbnail visual image” means “displaying to a user a thumbnail visual image.”
Upon further study, it is the court's conclusion that the invention is directed to the (at least partially concurrent) display of images to the user, as compared to the (at least partially concurrent) rendering of images for a user's (perhaps future) viewing. The invention is consistently described as a methodology for “displaying” information for a user's benefit. (See, e.g., col. 1, I. 14; col. 1, II. 39-41) The claims are drawn to the user's vantage point (“presenting internet information to a user”), as compared to describing the underlying system by which images are (concurrently) rendered by the web server and image server (via the web browser) for viewing. The term “providing [to a user] a thumbnail visual image” is construed, therefore, as “displaying to a user a thumbnail visual image.”
(2009 WL 3074712 (D.Del.)
This construction was dispositive of the question of infringement. The accused website services transmitted search results with hyperlinks but not thumbnails. The thumbnails were transmitted only when the user clicked on a hyperlink. With “providing” construed as “displaying,” the court then found no infringement:
[I]infringement by these products necessarily requires multiple parties' participation. That is, defendants perform at least one step of the claimed methods, while the users must facilitate at least the “providing” step by their own actions.
My two cents: In finding no infringement, the court did say that the claim required user action (clicking on a hyperlink). However, it seems to me the claim would have no direct infringer even if the claim didn't require user action, because as construed, the claim still required a step to be performed by a browser client, which is a separate entity than the server performing the rest of the steps.

In interpreting "provide" as "display," the court focused on parts of the spec that described displaying thumbnails to the user. Who knows whether the drafters and/or prosecutors of the patent considered how this interpretation of "provide" would result in divided infringement.

Perhaps the drafters/prosecutors used "providing" because it's broad. Why nail yourself down to server side (transmitting) or client side (displaying)? Let's pick a word that covers both!

I view this case as showing the danger of overreach: having the court pick a meaning that you don't want. I'd rather pick a word that specifically covers the way the technology works without having to rely on a stretch.

Now, picking that right word isn't easy, so you should think carefully about it. "Transmitting" has its own problems – does it require direct transmission, or does it cover indirect transmission too? Careful use in the spec can help you out here. Instead of relying on the spec to broaden your chosen term, consider writing the spec so that it further clarifies the narrower meaning that you want.


  1. ""Transmitting" has its own problems – does it require direct transmission, or does it cover indirect transmission too? Careful use in the spec can help you out here. Instead of relying on the spec to broaden your chosen term, consider writing the spec so that it further clarifies the narrower meaning that you want. "

    Or simply use direct transmission and/or indirect transmission in the claim...

  2. How about "rendering" or "formatting" an instruction for a client to perform X for transmission.

    This is safely within the server functionality and does not require actual transmission (direct or indirect) to boot.

  3. Another idea is to rely on claim differentiation. Use provide in the broader independent claim - then a narrow concept such as "direct transmission" in a dependent claim. This way you could still have the broader claiming and disclosure in the spec, but have the doctrine of claim differentiation and a dependent claim to fall back on if the issue becomes a defense to infringement.

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