Product Capable of Infringing Use did not Infringe Absent Proof of Specific Instances of Such Use

The court granted defendant's motion for summary judgment that its gift card did not infringe plaintiff's patent which claimed a method of performing anonymous online purchases. "[Plaintiff] has not adduced any evidence of direct infringement, such as evidence that gift card recipients actually have used the phrases on defendants’ gift cards to make purchases. This is important because, as the Court of Appeals for the Federal Circuit recently instructed, '[u]nless the claim language only requires the capacity to perform a particular claim element . . . it is not enough to simply show that a product is capable of infringement; the patent owner must show evidence of specific instances of direct infringement.'. . . [Plaintiff's] only evidence of infringement is testimony from its expert that the accused gift cards can be used in an infringing manner, not that gift card recipients used or were aware that they could use the accused cards in this way."

PrivaCash, Inc. v. American Express Co. et al., 3-09-cv-00391 (WIWD October 5, 2010, Order) (Crocker, M.J.)