Federal Circuit: Capability of performing in infringing manner is not necessarily direct infringement.
The claim in the case was to a candle holder that included a limitation that one part had to be "resting upon" another part. The Federal Circuit said that, because there was no evidence that the parts had ever been placed in that configuration, there was no evidence of infringement.
The patent owner tried to argue that the infringing product was capable of such an arrangement. The Federal Circuit rejected the theory:
A link to the case is below.[The patent owner's] reliance on cases that found infringement by accused products that were reasonably capable of operating in an infringing manner is misplaced, since that line of cases is relevant only to claim language that specifies that the claim is drawn to capability. See Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117-18 (Fed. Cir. 2002) (clarifying that infringement is not proven per se by a finding that an accused product is merely capable of infringing because "in every infringement analysis, the language of the claims, as well as the nature of the accused product, dictates whether an infringement has occurred"). Here, the language of claims 1 and 5 of the ’969 patent specifies that infringement occurs only if the accused product is configured with the cover being used as a base underneath a candle holder with feet. That the Travel Candle was reasonably capable of being put into the claimed configuration is insufficient for a finding of infringement. See Acco Brands, Inc. v. ABA Locks Mfr. Co., 501 F.3d 1307, 1313 (Fed. Cir. 2007) (rejecting a "reasonably capable" standard for direct infringement). Rather, infringement requires "specific instances of direct infringement or that the accused device necessarily infringes the patent in suit."
Ball Aerosol and Specialty Container, Inv. v. Limited Brands, Inc.


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