On-shelf versus in-use claims

Patent claims generally include both structural and functional elements. Where a structural element is associated with a functional element, two types of association can be found:

• the structural element is merely required to possess the capability of performing the functional element – a claim with the first type of association generally recites phrases such as “adapted to”, “capable of …ing” or “operable to”; or
• the need for actual operation is strongly associated with the structural element – a claim with the second type of association generally recites “for ...ing”.

The difference between these two types of association was established by following two landmark US judgments: Intel Corporation v US International Trade Commission (946 F 2d 821, Federal Circuit 1991) and Finjan, Inc v Secure Computing Corporation (626 F 3d 1197, Federal Circuit 2010).

In short, it can be said that a claim with the first type of association is an 'on-shelf' claim, and thus merely by making and offering for sale the claimed device a manufacturer would infringe the claim. A claim with the second type of association is an 'in-use' claim and the level of proof to allege infringement (at least in respect of the manufacturer) is higher than “mere making and offering for sale”. Therefore, drafters generally prefer to draft on-shelf claims.

In India, patent litigation, particularly in high technology domains (where such types of claim are more frequently drafted), began some years ago. Infringement suits in respect of Patents 243980, 223183, 200572, 203034, 203868, 213723, 229632, 234157, 240471, 241747, 203036, 195904 and 202302 have been filed with the Indian courts. As these litigations were all instituted against manufacturers, it is imperative to determine whether the claims therein are on-shelf or in-use claims.

For example, in-use claims are present in Patents 243980, 231895 and 203034, while on-shelf claims are present in Patents 223183 and 195904. Further, in CS (OS) 2501/2015 (infringement suit regarding Patents 203034, 203868, 213723, 229632, 234157, 240471, 241747 and 203036), the patentee provided the court with a higher level of evidence to prove infringement of in-use claims.

To date, the courts have expressed no clear preference for either type of claim. However, it will be interesting to monitor cases actively to see whether the Indian courts develop a preference for a particular type of association or claim language.