In Mastermine Software, Inc., v. Microsoft Corp., [2016-2465](October 30, 2017), the Federal Circuit affirmed the court’s claim construction, but reversed the court’s indefiniteness determination, and remand for proceedings consistent with its opinion.

U.S. Patent Nos. 7,945,850 and 8,429,518 describe a process by which an electronic worksheet is automatically created.  The district court construed the term “pivot table,” resulting in a stipulation of non-infringement.  The district court also agreed with Microsoft that certain of the claims were indefinite for improperly claiming two different subject-matter classes.

On appeal Mastermine argued the district court’s construction of pivot table was incorrect because it excludes tables that do not display data.  However the Federal Circuit found that each time the claims recite the generation of a pivot table, they further recite within the same limitation
that the generated pivot table contains data or presents data.  The Federal Circuit further found that the specification further supports the district court’s construction, noting that in the context of the invention is to display data that can be viewed, summarized, and manipulated by users, and such user action is available upon the generation of the pivot  tables.  The Federal Circuit further found that prosecution history of the patents  provides additional support for the district court’s construction.   Finally, the Federal Circuit found that MasterMine’s arguments in support of its contrary claim construction were not compelling.

With respect to the finding that claims 8 and 10 of the ’850 patent and
claims 1, 2, and 3 of the ’518 patent were invalid for indefiniteness, the Federal Circuit noted that while a claim directed to both a method and an apparatus may be indefinite, apparatus claims are not necessarily indefinite for using functional language.  The Federal Circuit disagreed with the district court, finding the claims were simply apparatus claims with
proper functional language, like HTC and MEC and UltimatePointer.  The Federal Circuit said that like the claims in MEC, HTC, and UltimatePointer, the claims at issue merely claim that the system possesses the recited structure which is capable of performing the recited functions.  Further, the Federal Circuit distinguished IPXL Holdings and Katz, as the claims at issue do not claim activities performed by the user; 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.

Because these claims inform those skilled in the art about the scope of the invention with reasonable certainty, the Federal Circuit reversed the district court’s determination that claims 8 and 10 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent are invalid as indefinite

In Ex Parte McAward, [Appeal 2015-006416 (Application 13/435,655)] (August 25, 2017), the Board of Appeals considered in definiteness under 35 U.S.C. § 112 in a rare precedential decision.  Applicant was claiming a water leakage detector that is easily connectable to flexible water hoses to monitor leakage from hot and cold water supply lines.  The claim included language that the detector is “configured to be reliably installed by an untrained installer or a homeowner and to not require the services of a plumber or electrician to perform installation, thereby permitting widespread and cost effective adoption.”

The Board began with an explanation of the rationale for the Office’s application of the Broadest Reasonable Interpretation to claims pending before the Office, one consequence of which is a lower threshhold for ambiguity than in the courts.  The Board explained that it did not understand that the Supreme Court’s Nautilus decision required any change in the Office’s approach to indefiniteness.  Thus the Board applied the approach for assessing indefiniteness approved by the Federal Circuit in Packard, i.e., “[a] claim is indefinite when it contains words or phrases whose meaning is unclear.”  The Board acknowledged that this requirement is not a demand for unreasonable precision, and does not contemplate in every case a verbal precision of the kind found in mathematics, and invokes some standard of reasonable precision in the use of language in the context of the circumstances.

The Board then turned to the “configured” limitation of the claim, noting that it is unusual because, rather than further defining the water detector’s structure, including by reference to a function that the water detector is capable of performing, the claim language attempts to further define the water detector’s structure by the skill level required to install the water detector.  The Board found that this language “fails to provide adequate clarity to the required structure because the skill level of ‘an untrained installer or a homeowner’ is ambiguous and vague, and thus, the meaning of a structure configured to be “reliably installed” by such an installer is unclear.

While the applicant argued that a person having ordinary skill in the art would understand the “configured” limitation to mean “capable of being installed without special knowledge or tools,” the Board observed that the specification did not support this definition.  The Board found that the Specification contains no description of, for example, the knowledge or tools required for installation of the claimed water detector, nor does the Specification define the skill level of an “untrained installer” or a “homeowner.”  The Board concluded that the claim “the claim suffers from general vagueness and ambiguity.”

The Board went on to point out that even if the applicant’s definition was correct the “configured” limitation, when read in light of the Specification, fails to further clearly define the structure encompassed by the limitation.  In other words, the Board said, neither the claim language or specification delineates how a person of ordinary skill would determine whether a water detector that includes each of the structural limitations of claim 1 further satisfies the “configured” limitation.

For these reasons, the Board agreed with the Examiner that the claimed “configured” limitation, under the broadest reasonable interpretation when read in light of the Specification, is vague and unclear, and a person having ordinary skill in the art would not be able to discern the metes and bounds of the claimed invention in light of this claim language.

In In re Walter, [2016-2256] (August 21, 2017), the Federal Circuit affirmed the PTAB’s decision in ex parte reexamination of U.S. Patent No. 7,513,711 that all twelve claims of the patent lack adequate written description and are indefinite under 35 U.S.C. § 112.

While the opinion is non-precedential, it still has a simple, but valuable lesson for applicants and patent owners.  During the reexamination Walter amended the claims (directed to artificial reefs for cultivating marine life) to require a “support structure” that was “block-like.”  The Examiner found this use of “block-like indefinite because Walter’s proposed construction conflicted with the dictionary meaning of the term “block.”  During the appeal to the PTAB and during the appeal to the Federal Circuit, Walter alternated between two different meanings of the claim term “block-like,” and therein is the lesson of the case.  If the applicant/patent owner can’t decide what a claim term means, then it is hard for the Board or a court to conclude that the term is sufficiently definite.

No-one can say whether one of the possible constructions would have satisfied 35 USC §112, but presenting two possible constructions certainly does not.

In Cox Communications, Inc. v. Sprint Communication Company LP, [2016-1013] (September 23, 2016), the Federal Circuit reversed the district court’s determination that the asserted claims of U.S. Patent Nos. 6,452,932; 6,463,052; 6,633,561; 7,286,561; 6,298,064; and 6,473,429 were not invalid for indefiniteness.

The parties agreed that “processing system” is not a means-plus-function
term, and confined its review to whether “processing system” renders the asserted patents indefinite under 35 U.S.C. § 112, ¶ 2.  The Federal Circuit found that the claim term “processing system” does not prevent the claims, read in light of the specification and the prosecution history, from informing those skilled in the art about the scope of the invention with reasonable certainty.

The Federal Circuit noted that the  case presented a peculiar scenario because the disputed term, “processing system,” plays no discernable role in defining the scope of the claims. The Court noted that all of the asserted claims are method claims, and
the point of novelty resides with the steps of these methods, not with the machine that performs them. The Federal Cricuit pointed out that if the words “processing system” were removed from the claims, therein meaning would not discernably change.  The Federal Circuit reasoned that if “processing system” does not discernably alter the
scope of the claims, it is difficult to see how this term would prevent the claims from serving their notice function under § 112, ¶ 2.

The Federal Circuit said that the common practice of focusing on individual terms is a “helpful tool,” but ultimately indefiniteness under § 112, ¶ 2 must ultimately turn on whether the “claims, read in light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention.” The Federal Circuit found that “processing system”
does not prevent the claims from doing just that.

In Advanced Ground Information Systems, Inc. v. Life360, Inc., [2015-1732] (July 28, 2016) the Federal Circuit affirmed summary judgment of invalidity of U.S. Patent Nos. 7,031,728 and 7,672,681 for indefiniteness.

At issue was the term “symbol generator” in the claims in a cellular communication system.  The Federal Circuit agreed that “symbol generator” invoked 35 U.S.C. § 112, ¶ 6, but were indefinite under 35 U.S.C. § 112, ¶ 2.

The Federal Circuit said that the failure to use the word “means” creates a rebuttable presumption that §112, ¶ 6 does not apply.  Whether §112, ¶ 6, applies depends upon whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure. The Federal Circuit said that the term “symbol generator” invokes §112, ¶ 6 because it fails to describe a sufficient structure
and otherwise recites abstract elements “for” causing actions, or elements “that can” perform functions.

The Federal Circuit noted that the patentee’s expert testified that the term “symbol generator” is a term coined for the purposes of the patents-in-suit, and that it was not used in “common parlance or by persons of skill in the pertinent art to designate structure.”  While the expert testified that “symbol” and “generator” are well known terms, the Federal Circuit found that the combination of the terms as used in the context of the relevant claim language suggests that it is simply an abstraction that describes the
function being performed (i.e., the generation of symbols).  Finally, the Federal Circuit found that the claim term “symbol generator,” by itself,
does not identify a structure by its function.

Having found that §112, ¶ 6, applies, the specification must disclose the corresponding structure or the claim in indefinte.  However, the Federal Circuit agreed with the district court that the the specifications of the patents-in-suit did not disclose an operative algorithm for the claim elements reciting
“symbol generator.” The function of generating symbols must be performed by some component of the patents-in-suit; however, the Federal Circuit said that the patents-in-suit do not describe this component.

In Media Rights Technologies, Inc. v. Capital One Financial Corporation, [2014-1218] (September 4, 2015), the Federal Circuit affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 7,316,033 were invalid for indefiniteness for containing means plus function elements without an identification of the corresponding structure in the specification.  At issue was the claim term “compliance mechanism” which appeared in every claim of the patent, which related to the prevention of unauthorized recording of media.

The Federal Circuit started with Nautilus’ definition of that a claim is indefinite if it fails to inform those skilled in the art about the scope of the claim with reasonable certainty.  The Federal Circuit noted that a  those skilled in the art about the t he indefiniteness — that a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.”

The Federal Circuit next address whether “compliance mechanism” was a means plus function element, noting that it is well settled that claim limitation that uses the word “means” invokes a rebuttable presumption that §112, ¶6 [now §112(f)] applies, and that a claim term that does not use “means” invokes a rebuttable presumption that § 112, ¶6 does not apply.  However, the presumption against the application of § 112, ¶ 6 to a claim term lacking the word “means” can be overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.

Media Rights argued that “compliance mechanism” was analogous to “modernizing device” which was not a means-plus-function claim in Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).  However the Federal Circuit distinguished Inventio because “modernizing device” described an electric circuit, which has sufficient structure, while in the present case “the claims do not use the term ‘compliance mechanism’ as a substitute for an electrical circuit, or anything else that might connote a definite structure.”  The Federal Circuit found no guidance in the intrinsic record as to what structure is being referenced. The Federal Circuit said that describing how the “compliance mechanism” is connected to and interacts with the other components of the system, what processes the “compliance mechanism” performs, and what structural subcomponents might comprise the “compliance mechanism,” were not enough.  It was the specification’s disclosure in Inventio regarding how the “modernizing device” and its internal components operated as a circuit, that connoted sufficient structure, and that was missing from Media Rights’ specification.  The Federal Circuit also distinguished Inventio as applying a heavy presumption against the application of §112, ¶6, which the Federal Circuit eliminated earlier this year.

Having determined that “compliance mechanism” was in fact a means-plus-function element, the Federal Circuit then proceeded to identifying the corresponding structure, material, or acts described in the specification to which the claim term is limited.  The Federal Circuit noted that where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions.  The Federal Circuit found that four functions were claimed, and the question is whether the specification discloses adequate structure to achieve all four of the claimed functions.

Because the functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor, it must also disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.

Relying on expert testimony, the Federal Circuit found that the disclosed portions of code in the specification did not explain how to perform at least one of the claimed function, making the disclosure inadequate.  The Federal Circuit also found a lack of disclosure of the means for performing another function, finding both a lack of detail and lack of explanation.  The Federal Circuit concluded that all the claims were invalid for indefiniteness.

Media Rights suggests that after Williamson v. Citrix Online, LLC, it more likely for functional language to be found to invoke §112(f), any time that functional language is used in a claim, the drafter should weigh the risk that §112(f), and provide an identification of corresponding structure, just in case.  When the invention is implemented by computer, the drafter must include the algorithm for all of the claimed functions.

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