Federal Circuit Clarifies Standard for Indefiniteness of Mixed Subject Matter Claims

Federal CircuitMastermine Software, Inc. v. Microsoft Corp., No. 2016-2465, 2017 U.S. App. LEXIS 21479 (Fed. Cir. Oct. 30, 2017) (Before Newman, O’Malley, and Stoll, J.) (Opinion for the court, Stoll, J.).

MasterMine owns two patents related to methods and systems for data mining based on a customer relationship management application. The claims include the creation of a multi-dimensional analysis table, or pivot table, allowing for a user to summarize large amounts of data.

MasterMine sued Microsoft for infringement. Two main issues arose. First was the proper construction of “pivot table.” Second was whether the claims were indefinite for improperly claiming two different subject-matter classes: an apparatus and a method of using it. The district court construed “pivot table” as “an interactive set of data displayed in rows and columns that can be rotated and filtered to summarize or view the data in different ways.” Additionally, the district court held certain claims invalid as indefinite. MasterMine appealed.

The Court affirmed the district court’s construction of “pivot table,” finding it proper in light of the claim language, specification, and prosecution history. The Court, however, reversed the district court’s judgment of invalidity due to indefiniteness and remanded.

The guiding case on indefiniteness of certain mixed subject matter claims is IPXL Holdings, L.L.C. v. Amazon.com, Inc., which held that a claim directed to both an apparatus and a method of using that apparatus obscures whether infringement occurs when someone creates the apparatus or uses it. The Court explained that IPXL does not preclude using functional language to recite a system with certain structures capable of performing certain functions. Such claims make clear that creating the apparatus is sufficient for infringement; it is not necessary for the apparatus to be used.

Here, the Court found that while the claims at issue recite certain functional capabilities, they are tied to structures of the system. For instance, claim 8 recites “a system comprising…a reporting module…wherein the reporting module…presents a set of user-selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields and generates a database query….” This claim language does not recite the user’s act of selection; it specifies the system’s capability of receiving a user selection. Additionally, these functions are specifically tied to a structure of the system, i.e. the reporting module. Because it is clear when infringement occurs, and the scope of the claims is reasonably certain, the Court reversed the judgment of invalidity due to indefiniteness.

Claims having functional elements are not indefinite, as encompassing both an apparatus and a method, if they make clear whether infringement occurs upon creating the apparatus or upon its use. A claim with functional language clearly tied to a structure that defines its capabilities is an apparatus claim; such functional language does not make the claim indefinite by also claiming a method of use.

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