Patent Watch: Function Media, L.L.C. v. Google Inc.

by BakerHostetler
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Simply put, [a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function.

On February 13, 2012, in Function Media, L.L.C. v. Google Inc., the U.S. Court of Appeals for the Federal Circuit (Rader, Newman, Reyna*) affirmed the district court's judgment entering the jury verdict that Google did not infringe U.S. Patents No. 6,446,045, No. 7,240,025 and No. 7,249,059, which related to advertising on multiple advertising outlets such as newspapers and websites, and that the patents were invalid for indefiniteness. The Federal Circuit stated:

FM raises several issues it maintains require a new trial. First, FM argues that the district court incorrectly found the '045 patent's means plus function limitation to be indefinite. With regard to the claims that went to the jury, FM contends that the district court's claim constructions were incorrect, and that the district court improperly allowed claim construction disputes to be decided by the jury. FM also argues that the jury's verdict was against the great weight of the evidence, was based upon an incorrect statement of the law, and was irreconcilable. Google responds that FM's arguments are really factual questions disguised as claim construction arguments, that the district court did construe all of the disputed terms, and that FM has waived many of its arguments.

We begin with FM's argument that the district court erred in granting summary judgment that the '045 patent was invalid for indefiniteness because it did not disclose a structure for the means plus function term "means for transmitting." [C]laims must "particularly point[] out and distinctly claim[] the subject matter which the applicant regards as his invention." Section 112, paragraph 6 allows for a limited exception, permitting "a claim [to] state the function of the element or step, and the 'means' covers the 'structure, material, or acts' set forth in the specification and equivalents thereof." The trade-off for allowing such claiming is that "the specification must contain sufficient descriptive text by which a person of skill in the field of the invention would 'know and understand what structure corresponds to the means limitation.'" It is well settled that "[s]imply disclosing software, however, 'without providing some detail about the means to accomplish the function[,] is not enough.'" When dealing with a "special purpose computer-implemented meansplus-function limitation," we require the specification to disclose the algorithm for performing the function. The "specification can express the algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure." Importantly, we have said that "[w]hile it is true that the patentee need not disclose details of structures well known in the art, . . . the specification must nonetheless disclose some structure."

Here, there is no specific algorithm disclosed in prose, as a mathematical formula, in flow charts, or otherwise. FM cites to several places in the specification that it contends describe the software. These citations all explain that the software automatically transmits, but they contain no explanation of how the PGP software performs the transmission function. For example, the specification states only that the PGP "either transmits the presentation to the appropriate destination or holds it for a publication date to be submitted for a particular deadline or predetermined promotional market." At most, the '045 Patent specification discloses that the structure behind the function of transmitting is a computer program that transmits. Beyond the program's function, however, no algorithm is disclosed. . . .

Having failed to provide any disclosure of the structure for the "transmitting" function, FM cannot rely on the knowledge of one skilled in the art to fill in the gaps. FM argues that "'in view of the existing knowledge in the field of the invention,' it is unnecessary and extraneous to provide any more detail," and that the disclosure "has more than 'sufficient structure for a person of skill in the field to provide an operative software program for the specified function.'" [T]here is no explanation of how to transmit. Furthermore, it is well established that proving that a person of ordinary skill could devise some method to perform the function is not the proper inquiry as to definiteness -- that inquiry goes to enablement. Simply put, [a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function. To allow that form of claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function. "Section 112, paragraph 6, is intended to prevent such pure functional claiming." We therefore affirm the district court's judgment that that claim 1 of the '045 Patent is invalid for indefiniteness.

FM contends that the district court erred in construing the terms "ad creation/processing," "selection," and "publishing," and that these errors require a new trial. . . . We begin our analysis with the language of the claim. "The words of a claim 'are generally given their ordinary and customary meaning,'" which "is the meaning that the term would have to a person of ordinary skill in the art in question at the time of the invention." "The claims, of course, do not stand alone. Rather, they are part of 'a fully integrated written instrument,' consisting principally of a specification that concludes with the claims. For that reason, claims 'must be read in view of the specification, of which they are a part.'"

The claim clearly states that the "processing" is done to the "electronic advertisement," not the inputted information. It follows that the creation of the ad must happen before the processing begins. If "processing" included "creating," the act of processing would have been performed on the inputted information, which would then lead to the creation of the rule-compliant ad. The claim terms themselves rule out the possibility that "processing" is done to the inputted information because a custom ad is created before the processing step. Thus, we find that the court's construction of taking the "customized" ad and then "processing" it to make it comply with the presentation rules was correct. . . .

In addition to arguing the district court's claim constructions were incorrect, FM maintains that the court improperly sent these constructions to the jury. [The] issue in this case is whether there were improper arguments, not whether questions of claim scope were submitted to the jury. . . . Nearly every patent case will involve some amount of "word games," because claims and claim constructions are, after all, just words. But FM's argument, if accepted, would make almost every case in which the parties' arguments did not directly quote the court's claim construction ripe for remand and new trial. We are confident that such situations should be rare. . . . Nor has FM argued that substantial interests of justice are at stake. Thus, we cannot say that the district court plainly erred in denying a new trial.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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