MasterMine Software, Inc. v. Microsoft Corp, Case No. 2016-2465 (Fed. Cir. October 30, 2017):
In MasterMine Software, Inc. v. Microsoft Corp., Case No. 2016-2465 (Fed. Cir., decided October 30, 2017), the U.S. Court of Appeals for the Federal Circuit affirmed the claim construction of the U.S. District Court for the District of Minnesota, reversed the District Court’s indefiniteness determination, and remanded for proceedings consistent with the opinion of the Federal Circuit.
Appellant MasterMine sued Appellee Microsoft for infringement of its two related patents (U.S. Patent Nos. 7,945,850 and 8,429,518). Both patents disclosed methods and systems that allow a user to easily mine and report data maintained by a customer relationship management (CRM) application. MasterMine appealed from a stipulated judgment of noninfringement and invalidity following adverse claim construction and indefiniteness rulings from the U.S. District Court for the District of Minnesota.
The District Court construed the meaning of the claim term “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.” The District Court held the claims indefinite for improperly claiming two different subject-matter classes. MasterMine challenged both the District Court’s claim construction and its indefiniteness determination.
The Federal Circuit explained that claim construction seeks to ascribe the “ordinary and customary meaning” to claim terms as a person of ordinary skill in the art would have understood them at the time of invention. See Phillips v. AWH Corp. In addition, “the person of ordinary skill in the art is deemed to read the claim term . . . in the context of the entire patent, including the specification.” But “[w]hile we read claims in view of the specification, of which they are a part, we do not read limitations from the embodiments in the specification into the claims.”
MasterMine argued that the term “pivot table” should be construed as a “computer software object [or structure] defining an interactive table that can show the same data from a list or a database in more than one arrangement,” and that the District court’s construction is incorrect because it excludes tables that do not display data.
However, the Federal Circuit found that the claim language supported the District Court’s construction and the patents’ specification further supported the District Court’s construction. The prosecution history of the patents was also found to provide additional support for the District Court’s construction.
Regarding indefiniteness, a patent specification must “conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention,” pursuant to pre-AIA 35 U.S.C. § 112, paragraph 2. The Federal Circuit also cited the Supreme Court as holding this definiteness provision “to require that a patent’s claims, viewed in light of the specification and prosecution history, inform those skilled in the art about the scope of the invention with reasonable certainty.” See Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). The Federal Circuit further held that a single claim covering both an apparatus and a method of use of that apparatus is indefinite under section 112, paragraph 2. See IPXL Holdings, L.L.C. v. Amazon.com, Inc.; see also Microprocessor Microprocessor Enhancement Corp. v. Tex. Instruments Inc. (MEC) (“Apparatus claims are not necessarily indefinite for using functional language,” “Indeed, functional language in a means-plus-function format is explicitly authorized by statute.").
After comparing the present case with several past Federal Circuit cases including IPXL Holdings, L.L.C. v. Amazon.com, Inc. (2005), In re Katz Interactive Call Processing Patent Litigation (2011), Rembrandt Data Techs., LP v. AOL, LLC (2011), HTC Corp. v. IPCom GmbH & Co., KG (2012), Microprocessor Enhancement Corp. v. Tex. Instruments Inc. (2008), and UltimatePointer, LLC v. Nintendo Co. (2014), the Federal Circuit concluded that although claim 8 of the ’850 patent includes active verbs such as “presents,” “receives,” and “generates,” these verbs represent permissible functional language used to describe capabilities of the “reporting module” (as in MEC, HTC, UltimatePointer). The court further found that the claims in the present case do not claim activities performed by the user (unlike IPXL Holdings, Katz).