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

by BakerHostetler

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.

© BakerHostetler | Attorney Advertising

Written by:


BakerHostetler on:

Readers' Choice 2017
Reporters on Deadline

"My best business intelligence, in one easy email…"

Your first step to building a free, personalized, morning email brief covering pertinent authors and topics on JD Supra:
Sign up using*

Already signed up? Log in here

*By using the service, you signify your acceptance of JD Supra's Privacy Policy.
Custom Email Digest
Privacy Policy (Updated: October 8, 2015):

JD Supra provides users with access to its legal industry publishing services (the "Service") through its website (the "Website") as well as through other sources. Our policies with regard to data collection and use of personal information of users of the Service, regardless of the manner in which users access the Service, and visitors to the Website are set forth in this statement ("Policy"). By using the Service, you signify your acceptance of this Policy.

Information Collection and Use by JD Supra

JD Supra collects users' names, companies, titles, e-mail address and industry. JD Supra also tracks the pages that users visit, logs IP addresses and aggregates non-personally identifiable user data and browser type. This data is gathered using cookies and other technologies.

The information and data collected is used to authenticate users and to send notifications relating to the Service, including email alerts to which users have subscribed; to manage the Service and Website, to improve the Service and to customize the user's experience. This information is also provided to the authors of the content to give them insight into their readership and help them to improve their content, so that it is most useful for our users.

JD Supra does not sell, rent or otherwise provide your details to third parties, other than to the authors of the content on JD Supra.

If you prefer not to enable cookies, you may change your browser settings to disable cookies; however, please note that rejecting cookies while visiting the Website may result in certain parts of the Website not operating correctly or as efficiently as if cookies were allowed.

Email Choice/Opt-out

Users who opt in to receive emails may choose to no longer receive e-mail updates and newsletters by selecting the "opt-out of future email" option in the email they receive from JD Supra or in their JD Supra account management screen.


JD Supra takes reasonable precautions to insure that user information is kept private. We restrict access to user information to those individuals who reasonably need access to perform their job functions, such as our third party email service, customer service personnel and technical staff. However, please note that no method of transmitting or storing data is completely secure and we cannot guarantee the security of user information. Unauthorized entry or use, hardware or software failure, and other factors may compromise the security of user information at any time.

If you have reason to believe that your interaction with us is no longer secure, you must immediately notify us of the problem by contacting us at In the unlikely event that we believe that the security of your user information in our possession or control may have been compromised, we may seek to notify you of that development and, if so, will endeavor to do so as promptly as practicable under the circumstances.

Sharing and Disclosure of Information JD Supra Collects

Except as otherwise described in this privacy statement, JD Supra will not disclose personal information to any third party unless we believe that disclosure is necessary to: (1) comply with applicable laws; (2) respond to governmental inquiries or requests; (3) comply with valid legal process; (4) protect the rights, privacy, safety or property of JD Supra, users of the Service, Website visitors or the public; (5) permit us to pursue available remedies or limit the damages that we may sustain; and (6) enforce our Terms & Conditions of Use.

In the event there is a change in the corporate structure of JD Supra such as, but not limited to, merger, consolidation, sale, liquidation or transfer of substantial assets, JD Supra may, in its sole discretion, transfer, sell or assign information collected on and through the Service to one or more affiliated or unaffiliated third parties.

Links to Other Websites

This Website and the Service may contain links to other websites. The operator of such other websites may collect information about you, including through cookies or other technologies. If you are using the Service through the Website and link to another site, you will leave the Website and this Policy will not apply to your use of and activity on those other sites. We encourage you to read the legal notices posted on those sites, including their privacy policies. We shall have no responsibility or liability for your visitation to, and the data collection and use practices of, such other sites. This Policy applies solely to the information collected in connection with your use of this Website and does not apply to any practices conducted offline or in connection with any other websites.

Changes in Our Privacy Policy

We reserve the right to change this Policy at any time. Please refer to the date at the top of this page to determine when this Policy was last revised. Any changes to our privacy policy will become effective upon posting of the revised policy on the Website. By continuing to use the Service or Website following such changes, you will be deemed to have agreed to such changes. If you do not agree with the terms of this Policy, as it may be amended from time to time, in whole or part, please do not continue using the Service or the Website.

Contacting JD Supra

If you have any questions about this privacy statement, the practices of this site, your dealings with this Web site, or if you would like to change any of the information you have provided to us, please contact us at:

- hide
*With LinkedIn, you don't need to create a separate login to manage your free JD Supra account, and we can make suggestions based on your needs and interests. We will not post anything on LinkedIn in your name. Or, sign up using your email address.