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.



The Author

Joseph Robinson

Joseph Robinson has over 20 years of experience in all aspects of intellectual property law. He focuses his practice in the pharmaceutical, life sciences, biotechnology, and medical device fields. His practice encompasses litigation, including Hatch-Waxman litigation; licensing; counseling; due diligence; and patent and trademark prosecution. He has served as litigation counsel in a variety of patent and trademark disputes in many different jurisdictions, and has also served as appellate counsel before the Court of Appeals for the Federal Circuit. Joe also focuses on complex inter partes matters before the U.S Patent and Trademark Office, inventorship disputes, reexaminations and reissues. His experience includes numerous interferences, a particular advantage in new U.S. Patent and Trademark Office post-grant proceedings. He also counsels on patent–related U.S. Food and Drug Administration issues, including citizen petitions, Orange Book listing, and trademark issues. For more information and to contact Joe please visit his profile page at the Troutman Sanders website.

Joseph Robinson

Robert Schaffer is an intellectual property partner at Troutman Sanders. Bob applies more than 30 years of experience to IP counseling and litigation. His work includes patent procurement, strategic planning and transactional advice, due diligence investigations, district court patent cases, and Federal Circuit appeals. He regularly handles complex and high-profile domestic and international patent portfolios, intellectual property agreements and licensing, IP evaluations for collaborations, mergers, and acquisitions. In disputed court cases Bob’s work includes representing and counseling client in ANDA litigations, complex patent infringement cases and appeals, and multidistrict and international cases. In disputed Patent Office matters his work includes representing and counseling clients in interferences, reexaminations, reissues, post-grant proceedings, and in European Oppositions. For more information and to contact Bob please visit his profile page at the Troutman Sanders website.

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author as of the time of publication and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently No Comments comments.