By Michael Borella --
Mastermine brought a patent infringement action against Microsoft in the District of Minnesota. At issue were four claims of U.S. Patent No. 7,945,850 and three claims of U.S. Patent No. 8,429,518. After claim construction and indefiniteness rulings came down unfavorably for Mastermine, the parties agreed to a stipulated judgment of non-infringement and invalidity of the patents. Mastermine appealed.
As explained by the Federal Circuit on review:
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 quickly and easily summarize or view large amounts of CRM data. For example, the user can rotate the rows and columns of a pivot table to see different summaries of the CRM data, filter the data by displaying different pages, or display the details for [an] area of interest.
The District Court held that several of the asserted claims were invalid for claiming both a system and method steps. While the Federal Circuit eventually reversed this holding, its review of the relevant case law is instructive for understanding the claim drafting nuances at hand.
The Court began by noting that a claim covering both an apparatus and a method of using that apparatus is indefinite under 35 U.S.C. § 112, paragraph 2. According to the Court, the concern is that doing so "within a single claim can make it unclear whether infringement occurs when one creates an infringing system, or whether infringement occurs when the user actually uses the system in an infringing manner." However, "apparatus claims are not necessarily indefinite for using functional language," as means-plus-function language is explicitly permitted by statute.
In order to further illustrate the differences between permissible and impermissible functional language in apparatus claims, the Court reviewed its recent cases addressing this matter.
In IPXL Holdings, L.L.C. v. Amazon.com, Inc., the claim at issue recited:
The system of claim 2 [including an input means] wherein the predicted transaction information comprises both a transaction type and transaction parameters associated with that transaction type, and the user uses the input means to either change the predicted transaction information or accept the displayed transaction type and transaction parameters.
The problem with this claim is whether infringement occurs "when one creates a system that allows the user to change the predicted transaction information or accept the displayed transaction, or whether infringement occurs when the user actually uses the input means to change transaction information or uses the input means to accept a displayed transaction." Thus, the claim was held indefinite.
In In re Katz Interactive Call Processing Patent Litigation, a claim recited:
[A] system with an interface means for providing automated voice messages . . . to certain of said individual callers, wherein said certain of said individual callers digitally enter data.
Even though the active step of individual callers digitally entering data appears in a wherein clause, this claim exhibited the same problem as that of In re Katz -- is the claim infringed when the system is made or when the active step occurs? This claim was held indefinite as well.
In Rembrandt Data Techs., LP v. AOL, LLC, a challenged claim recited:
A data transmitting device for transmitting signals corresponding to an incoming stream of bits, comprising:
first buffer means . . . ;
fractional encoding means . . . ;
second buffer means . . . ;
trellis encoding means for trellis encoding the frames from said second buffer means; and
transmitting the trellis encoded frames.
Here, there was little controversy. The apparatus claim clearly includes a method step, rendering it indefinite.
On the other hand, a number of cases have found functional language in apparatus claims to be definite due to how the functional language is drafted. In HTC Corp. v. IPCom GmbH & Co., KG, the claim recited:
A mobile station for use with a network including a first base station and a second base station that achieves a handover from the first base station to the second base station by:
storing link data for a link in a first base station,
holding in reserve for the link resources of the first base station, and
when the link is to be handed over to the second base station:
initially maintaining a storage of the link data in the first base station,
initially causing the resources of the first base station to remain held in reserve, and
at a later timepoint determined by a fixed period of time predefined at a beginning of the handover, deleting the link data from the first base station and freeing up the resources of the first base station, the mobile station comprising:
an arrangement for reactivating the link with the first base station if the handover is unsuccessful.
According to the Court, this claim "does not recite a mobile station and then have the mobile station perform the six enumerated functions, but rather . . . claim merely establishes those functions as the underlying network environment in which the mobile station operates." Thus, infringement only occurs when one makes, offers to sell, or sells the mobile station, or uses it in this network environment. Therefore, the claim is valid.
In Microprocessor Enhancement Corp. v. Tex. Instruments Inc., the claim in question recited:
A pipelined processor for executing instructions comprising:
a conditional execution decision logic pipeline stage . . . ;
* * *
the conditional execution decision logic pipeline stage performing a boolean algebraic evaluation of the condition code and said conditional execution specifier and producing an enable-write with at least two states, true and false;
said enable-write when true enabling and when false disabling the writing of instruction results at said write pipeline stage;
the conditional execution decision logic pipeline stage, when specified by the conditional execution specifier, determining the enable-write using the boolean algebraic evaluation.
Here, the Court held that the claim is "clearly limited to a pipelined processor possessing the recited structure and capable of performing the recited functions, and is thus not indefinite."
In UltimatePointer, L.L.C. v. Nintendo Co., a claim recited "a handheld device including: an image sensor, said image sensor generating data' and other similar 'generating data' limitations." This claim was definite because "the 'generating data' limitation reflects the capability of that structure rather than the activities of the user, and do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities."
Turning to the case at hand, claim 8 of the '850 patent recites in relevant part:
A system comprising:
a reporting module installed within the CRM software application . . . wherein the reporting module installed within the CRM software application presents a set of user-selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields.
The Court observed that the active verbs therein -- presents, receives, and generates -- are used to describe the capabilities of the system, and therefore the system "possesses the recited structure which is capable of performing the recited functions." Furthermore, claim 8 is unlike that of In re Katz, because the activities of the user are not actually being claimed. Instead, the claim focuses on the system's capability to interact with a user. Additionally, unlike Rembrandt, "the functional language here does not appear in isolation, but rather, is specifically tied to structure: the reporting module installed within the CRM software application."
Thus, claim 8 does not attempt to cover both an system and the use of that system, and infringement occurs when one makes, uses, offers to sell, or sells the claimed system. Accordingly, the claim was ruled to be definite, and the District Court was reversed on this issue.
The take home from all of this is that when you draft an apparatus claim with functional language, make sure that the verbs of functional language recite actions that are carried out by the apparatus. For instance, the apparatus might receive input, respond to that input in some fashion, and provide output. Avoid claiming actions of a user or even those of another device (in fact, best practice in many situations is to avoid reciting a user at all, if possible).
Mastermine Software, Inc. v. Microsoft Corp. (Fed. Cir. 2017)
Panel: Circuit Judges Newman, O'Malley & Stoll
Opinion by Circuit Judge Stoll