Docket No. 2012-1020
RADER, NEWMAN, REYNA
February 13, 2013
Brief summary: Means-plus-function software claims require an algorithm; patentee may not rely on knowleged in the art to fill the gaps and flow charts may not be sufficient (“Section 112, paragraph 6, is intended to prevent such pure functional claiming.” (citing Blackboard, FC 2009)).
Summary: Function Media (FM) apealed DC invalidation of its patents related to the automatic formatting of advertisements to fit the requirements of different media outlets. A central computer hosts databases (e.g., presentation rules database) and software (Presentation Generating Program (PGP)). FM asserted that Google’s AdSense for Content and AdSense for Mobile products infringed its patents when used in conjunction with Google’s AdWords interface (note: FM and Yahoo settled before trial). The DC concluded that FM’s US 6,446,045 was indefinite as it did not disclose sufficient structure for the term “means for transmitting”. Certain claims of its other patents were also found invalid and not infringed. All of these claims were also found invalid in reexamination and these decisions have been separately appealed. Regarding the indefiniteness decision, the FC panel concluded that does not disclose an algorithm for the software for the “means for transmitting” (e.g., the PGP) and “FM cannot rely on the knowledge of one skilled in the art to fill in the gaps” (“Section 112, paragraph 6, is intended to prevent such pure functional claiming.” (citing Blackboard, FC 2009)). FM also disputed the DC construction of the terms “ad creation/processing”, “selection” and “publishing” but the FC affirmed each conclusion based on the ordinary meaning of the terms read in view of the specification (citing Philips, FC 2005). FM also argued for a new trial becase the DC improperly sent the claim construction issues to the jury (citing O2 Micro Int., FC 2008 (“[w]hen the parties present a fundamental dispute regarding the scope of a claim term, it is the court’s duty to resolve it.”)) This argument was rejected. FM also argued that the verdicts of non-infringement and invalidity were irreconcilable because “the jury had to rely on differing claim constructions for infringement and invalidity to reach its invalidity and noninfringement decisions because Google’s technology works the same way as the prior art.” These arguments were also rejected because FM failed to raise these objections at trial. FM’s request for a new trial was also denied. Thus, the DC decision was affirmed.