Addressing issues of indefiniteness and claim construction, the US Court of Appeals for the Federal Circuit affirmed the district court's claim construction but reversed its indefiniteness decision, concluding that the system claims at issue did not impermissibly claim two different subject matter classes. MasterMine Software, Inc. v. Microsoft Corp., Case No. 16-2465 (Fed. Cir., Oct. 30, 2017) (Stoll, J).
MasterMine sued Microsoft for infringement of two patents that disclosed methods and systems for allowing users to mine and report data maintained in customer relationship management (CRM) applications. The patents described the creation of an electronic worksheet containing a "pivot table," which allows users to "quickly and easily summarize or view large amounts of CRM data." The district court construed "pivot table" to mean "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 also held several claims to be indefinite for improperly claiming both an apparatus and a method using the apparatus. Following the claim construction order, both parties stipulated to final judgments of non-infringement and invalidity for indefiniteness, but MasterMine reserved the right to appeal the district court's claim construction order.
On appeal, the Federal Circuit affirmed the district court's construction of the term "pivot table," finding that it was supported by the intrinsic evidence. Turning to the issue of indefiniteness based on functional claiming, the Court centered its analysis on its 2005 decision in IPXL Holdings, L.L.C. ( IP Update, Vol. 8, No. 12). In IPXL, the Court held that a claim covering both an apparatus and a method of use of that apparatus is indefinite under § 112, ¶ 2 because it is unclear whether infringement occurs by creating an infringing system or by actually using the system in an infringing manner. The Court also noted that several cases after its decision in IPXL also found claims indefinite for reciting apparatus and method steps.
Despite IPXL and subsequent decisions, the Federal Circuit noted that "apparatus claims are not necessarily indefinite for using functional language." For example, the Court recognized that in HTC Corp. v. IPCom GmbH & Co., KG ( IP Update, Vol. 15, No. 2), it found apparatus claims using functional language to not be invalid because the functional language served the purpose of establishing the underlying network environment in which the claimed mobile station operated. The Court also noted other cases in which functional language in the claims was tailored to recite the capability of the recited functions and therefore did not render the claim indefinite under IPXL.
Turning to MasterMine's patent, the Federal Circuit explained that even though it included "active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the reporting module." The Court further found that the claims were distinguishable from IPXL because they did not claim activities performed by the user of the system. Rather, the claims recited the system's capability to receive and respond to a user's selection. Thus, the Court concluded that the claims used permissible functional language to describe the capabilities of the claimed system, and it was clear that infringement occurs only when one makes, uses, offers to sell, or sells the claimed system.
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