On February 13, 2013, the U.S. Court of Appeals for the Federal Circuit issued its opinion in Function Media, L.L.C v. Google Inc., __ F.3d __ (Fed. Cir. 2013). In the decision, written by Judge Reyna, the Federal Circuit affirmed the district court’s invalidation of one of the plaintiff’s patents as indefinite. The court found that the patent specification failed to include an adequate structure, or algorithm, for its means-plus-function limitation.
Previously, the plaintiff-appellant in the case, Function Media, L.L.C, had brought a lawsuit against Google Inc. in the U.S. District Court for the Eastern District of Texas. The company alleged that Google’s AdSense products infringed its advertising patents: U.S. Patent Nos. 6, 446, 045 (“045 patent”), 7, 240, 025 (“025 patent”), and 7, 249, 059 (“059 patent”).
After a claim construction hearing, however, the district court found that the first claim of the ‘045 patent was indefinite, and thereby invalid, and granted summary judgment for Google. In particular, the court held that the patent’s specification did not include an adequate structure for its claim’s mean-plus-function terms, “means for transmitting,” as required by 35 U.S.C § 112, paragraph 6, of the U.S Patent Act.
In its appeal, Function Media argued that the district court was incorrect in invalidating it means-plus-function limitation as indefinite, because the specification actually discloses the software that performs the transmitting function. Also, according to Function Media, any more detail is unnecessary if a person of ordinary skill in the art would recognize the corresponding structure.
According to the Federal Circuit, however, the patent’s specification lacked any explanation of how its software performs the function, causing it to be indefinite. Pursuant to Noah Systems, Inc. v. Intuit Inc., 657 F. 3d 1302 (Fed. Cir. 2012), and Blackboard, Inc. v. Desire2Learn Inc., 574 F. 3d 1371 (Fed. Cir. 2009), a means-plus-function-claim, involving software, requires a corresponding algorithm to satisfy the structure requirements of 35 U.S.C § 112. The algorithm can be expressed in any clear way.
Additionally, noting its decision in Default Proof Credit Card System, Inc. v. Home Depot U.S.A, Inc., 412 F. 3d 1291 (Fed. Cir. 2005), the Federal Circuit explained that a person of ordinary skill in the art is not relevant to a determination of a claim’s indefiniteness, as that test only applies to the sufficiency of a disclosed algorithm.
Finally, in addition to affirming the district court’s invalidation of the ‘045 patent, the Federal Circuit also affirmed the district court’s claim construction, as well as the jury verdict that two other Function Media patents were invalid and not infringed.