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Federal Circuit Affirms Western District Of Texas’s Final Judgment Of Invalidity
11/01/2023On October 6, 2023, the United States Court of Appeals for the Federal Circuit (“CAFC”) issued an opinion affirming the Western District of Texas’s holding of indefiniteness as to certain claims of U.S. Patent No. 8,751,585 (the “’585 Patent”). WSOU Investments LLC (“WSOU”) accused Google LLC (“Google”) of infringing independent claim 9, and claims 10-16 dependent therefrom, of the ’585 Patent. The ’585 Patent is directed to a management method for electronic messages in a user’s inbox in a communication system. The district court construed the limitation, “a collaborative application management processor configured to manage collaborative application,” to be indefinite as a means-plus-function limitation without sufficient corresponding structure.
On appeal, WSOU argued that the district court erred, procedurally and substantively, in construing the limitation as a means-plus-function limitation. First, WSOU argued that the district court procedurally erred because the court did not give effect to the presumption against means-plus-function claims. The district court determined that the presumption was overcome because the words of the “collaborative application management” limitation did not have “a generally understood structural meaning in the art or on their own provide structural significance.” Additionally, the district court held that the word “processor”—in the context of the ’585 Patent—is used generically as an equivalent to “means,” because of the claim language and the lack of any description of “a collaborative application management processor.” In rejecting WSOU’s argument, the CAFC found that the district court expressly applied the presumption and that the claim limitation was written in means-plus-function form because nothing in the claim or the specification describes structure.
Second, the CAFC held that the district court was substantively correct that Google overcame the presumption. The CAFC determined that there is no categorical rule that “processor” is or is not structural, and analyzed the intrinsic record to address whether the claim limitation was understood by persons of ordinary skill in the art to have a sufficiently definite structure. Because the phrases “collaborative application management processor” and “configured to manage collaborative applications” both describe the same purely functional characteristics of an undefined and uncertain “processor,” the CAFC found that the claim limitation is self-referential. The CAFC reasoned that there is no indication of how the processor manages collaborative applications, and the claims themselves do not describe how this processor interacts with the other claimed components in a way that might inform the structural character of the limitation.
Finding that the district court did not err in its construction of the claim limitation as a means-plus-function limitation, the CAFC further held that Google demonstrated by clear and convincing evidence that the specification failed to provide sufficient structure to perform the claimed function, for example, an algorithm.
