Federal Circuit Reverses Finding of Indefiniteness for Claiming Both an Apparatus and a Method

MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.: Oct. 30, 2017. Before Newman, O’Malley, Stoll.

 

Takeaway:

  • System claims containing functional language are not indefinite for covering both an apparatus and a method if the claims merely use permissible functional language to describe the capabilities of the claimed system.

Procedural Posture: Alleged Infringer appealed stipulated judgment of non-infringement and invalidity following adverse claim construction and indefiniteness rulings from the United States District Court for the District of Minnesota. The CAFC affirmed the court’s claim construction, reversed the court’s indefiniteness determination, and remanded.

  • Claim Construction: The patents describe a process by which an electronic worksheet is automatically created. Within this electronic worksheet, a multi-dimensional analysis table, known as a pivot table, allows the user to summarize or view large amounts of customer relationship management (CRM) data.  The District Court construed “pivot table,” the term the patentee contested on appeal, to mean “an interactive set of data displayed in rows and columns that can be rotated and filtered to summarize or view the data in different ways.”  On appeal, the patentee contended that the District Court’s construction is incorrect because it excluded tables that do not display data.  The CAFC disagreed, finding that the claim language supports the District Court’s construction, the patents’ identical specification further supports the District Court’s construction, and the prosecution history of the patents supports the District Court’s construction.
  • Indefiniteness: The District Court determined that several claims of each of the asserted patents are invalid for indefiniteness for introducing method elements into system claims. The CAFC disagreed, finding that the claims in questions are apparatus claims with proper functional language.  The CAFC distinguished this case from precedent, saying that while the claims at issue here “make reference to user selection, they do not explicitly claim the user’s act of selection, but rather, claim the system’s capability to receive and respond to user selection,” and noting that the functional language in the claims does not appear in isolation, but rather, is specifically tied to structure.  The CAFC further noted that “[because the claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system.”  The CAFC thus reversed the District Court’s indefiniteness determination and remanded to the District Court for further proceedings.

 

Authored by Georg C. ReitboeckJeremy S. Boczko, and Susanna P. Lichter

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