West Case Update

Method Patent Requires Duplication of Every Step of Method to Be Infringement

Description Federal circuit held that a system that performed the same process as a process covered by a method patent did not infringe because the steps performed by the non-patented system varied from the steps in the method patent.

Topic Intellectual Property

Key Words Patents; Method; Infringement

C A S E S U M M A R Y

Facts
BMC has patents that claim a method for processing debit transactions without a PIN number, called PIN-less debit pill payment (PDBP). It does so by combining the action of several participants, including the payee’s agent (such as BMC), a remote payment network (such as an ATM), and the card-issuing financial institution. It uses a process called interactive voice response (IVR). Paymentech processes financial transactions for clients using a PDBP that also uses an IVR. BMC claimed that Paymentech’s process infringed on its patents and demanded royalties. Paymentech refused and sued seeking a declaration of non-infringement. BMC then sued for infringement. The district court held there was no infringement. BMC appealed.

Decision
Affirmed. BMC’s patents are called method patents. They require a series of specific steps to be performed. Paymentech’s system did not perform or cause to be performed every step of patented method for processing debit transactions without a PIN that BMC’s system did. Duplication of the method would be required to find direct patent infringement. Such infringement is a strict-liability offense, but it is limited to those who practice each and every element of the claimed invention.

Citation BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir., 2007)

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Method Patent Requires Duplication of Every Step of Method to Be Infringement
Description	Federal circuit held that a system that performed the same process as a process covered by a method patent did not infringe because the steps performed by the non-patented system varied from the steps in the method patent.
Topic	Intellectual Property
Key Words	Patents; Method; Infringement
C A S E S U M M A R Y
Facts	BMC has patents that claim a method for processing debit transactions without a PIN number, called PIN-less debit pill payment (PDBP). It does so by combining the action of several participants, including the payee’s agent (such as BMC), a remote payment network (such as an ATM), and the card-issuing financial institution. It uses a process called interactive voice response (IVR). Paymentech processes financial transactions for clients using a PDBP that also uses an IVR. BMC claimed that Paymentech’s process infringed on its patents and demanded royalties. Paymentech refused and sued seeking a declaration of non-infringement. BMC then sued for infringement. The district court held there was no infringement. BMC appealed.
Decision	Affirmed. BMC’s patents are called method patents. They require a series of specific steps to be performed. Paymentech’s system did not perform or cause to be performed every step of patented method for processing debit transactions without a PIN that BMC’s system did. Duplication of the method would be required to find direct patent infringement. Such infringement is a strict-liability offense, but it is limited to those who practice each and every element of the claimed invention.
Citation	BMC Resources, Inc. v. Paymentech, L.P., 498 F.3d 1373 (Fed. Cir., 2007)