July 2014
Means-Plus-Function Claim Must Disclose Some Algorithm for Performing the Function and Cannot Merely Restate the Function Recited in the Claim
| Judges: Moore (author), Schall, Reyna |
| [Appealed from N.D. Cal., Magistrate Judge Spero] |
In Augme Technologies, Inc. v. Yahoo! Inc., Nos. 13-1121, -1195 (Fed. Cir. June 20, 2014), the Federal Circuit affirmed the district court’s grant in Yahoo! Inc.’s (“Yahoo!”) favor of SJ of noninfringement of U.S. Patent Nos. 6,594,691 (“the ’691 patent”) and 7,269,636 (“the ’636 patent) (collectively “the Augme patents”), and SJ of indefiniteness of the ’691 patent. Also, the Court affirmed the district court’s claim construction of the term “server hostname” and entry of judgment that Yahoo!’s U.S. Patent No. 7,640,320 (“the ’320 patent”) was infringed, and affirmed the district court’s conclusion that the ’320 patent was not indefinite.
Augme Technologies, Inc. (“Augme”) sued Yahoo!, alleging infringement of certain claims of the Augme patents, and Yahoo! counterclaimed that Augme and World Talk Radio, LLC (collectively “Appellants”) infringed certain claims of the ’320 patent. After claim construction, the district court granted Yahoo!’s motion for SJ, finding noninfringement of the Augme patents, either literally or under the DOE. The district court also granted Yahoo!’s motion for SJ of invalidity, finding that certain means-plus-function claims of the ’691 patent were indefinite. The district court further determined that the asserted claim of the ’320 patent was not indefinite. Appellants had stipulated to infringement of the ’320 patent based on the district court’s claim construction. Appellants appealed.
The Augme patents disclose adding functionality, such as media or advertisements, to a web page. As articulated by the Federal Circuit, the asserted claims require two code modules: a first code module embedded in a web page, and a second code module that contains the code for the added functionality and a “service response,” where the first code module issues a command to retrieve the second code module from a server. As the Court further detailed, the accused Yahoo! systems use “smart tags” (the alleged embedded first code module) embedded into a web page. The smart tag is executed to download an intermediary “smart code,” which is then executed to send parameters to the Yahoo! server and to request an “imp code” (the alleged second code module). The “imp code” that is returned to the browser includes an “ad code” (the alleged service response) that either includes an advertisement for display or is blank.
“[T]o meet the definiteness requirements of 35 U.S.C. § 112, second paragraph, the specification must disclose an algorithm for performing the claimed function. Certainly, the algorithm may be expressed in ‘any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure.’ But it must disclose some algorithm; it cannot merely restate the function recited in the claim.” Id. at 18 (citation omitted) (quoting Finisar Corp. v. DirectTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)).
On appeal, the Federal Circuit first turned to the district court’s grant of SJ of Yahoo!’s noninfringement of the Augme patents. Addressing the district court’s determination that Yahoo!’s accused systems did not meet the “service response” limitations, the Court affirmed the district court’s construction to require an indication of web page permission, but agreed with Appellants that there was a genuine issue of material fact as to whether the advertisements or blank codes in the “imp code” provide an indication of web page permission. With respect to the “embedded first code module” limitation, the Court affirmed the district court’s construction of “embedded” to mean “written into the HTML code of the web page,” which excludes linked code. Slip op. at 8-9 (citation omitted). Accordingly, the Court agreed with the district court that neither Yahoo!’s smart tag nor its smart code constitutes the “embedded first code module” because the smart tag did not retrieve the imp code, and the smart code was linked, not embedded. Id. at 12. The Court further agreed that the combination of the embedded smart tag and the linked smart code was not an equivalent to the “embedded first code module” either, because “embedded” cannot be partially linked. Id. at 13-14. The Court therefore affirmed the grant of SJ of no literal infringement or infringement under the DOE.
The Court then reviewed the SJ of invalidity of Augme’s means-plus-function claims. The Court explained that, for a means-plus-function limitation to meet the definiteness requirements, the specification must disclose some algorithm, such as a mathematical formula, or as a flow chart, or any other manner that provides sufficient structure, for performing the claimed function, rather than merely restating the function recited in the claim. The Court affirmed the conclusion of indefiniteness because the ’691 patent did not disclose any algorithm for assembling the second computer-readable code module.
The Court also addressed Appellants’ argument that it did not infringe the ’320 patent, under a correct construction. Yahoo!’s ’320 patent is directed to retrieving digital content over a computer network using a unique identifier associated with a server hostname and a filename. The district court construed “server hostname” to be a “network name of a server.” Id. at 20. The Court agreed with the district court’s construction and declined to follow Appellants’ proposed construction, which had additional limitations not supported by the specification or the prosecution history. Because Appellants stipulated to infringement based on the district court’s construction, the Court affirmed the district court’s entry of judgment that Appellants infringed.
Finally, the Court addressed Appellants’ invalidity challenge to claim 7 of the ’320 patent, which recites, inter alia, “receiving, by an ingest server, the unique identifier to the digital content.” Id. at 23. Appellants argued that the limitation was indefinite because the ’320 patent did not disclose that the ingest server received a unique identifier. The Court disagreed and characterized the arguments as being based on the wrong legal standard, i.e., written description or enablement as opposed to indefiniteness. Accordingly, the Court affirmed the district court’s determination that claim 7 was not indefinite.
Therefore, the Federal Circuit affirmed the district court’s entries of SJ for the Augme patents and affirmed the district court in all respects regarding the ’320 patent.
