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November 4, 2011

Means On The Wind

Typhoon Touch sued Dell, Apple, and other corporate powers over its software keyboard patents: 5,379,057 & 5,675,362. The plutocratic protection afforded by the courts insured that Typhoon would run out of wind in its assertion, and so it did. The easiest trip-up is claim construction. Sure enough, all it took to take the Typhoon down were a few soft keystrokes. In the finale, the CAFC couldn't resist whipping up self-contradictory case law on means-plus-function claim elements.

Typhoon Touch Technologies v. Dell et al (CAFC 2009-1589) precedential; Judges Radar, Newman (author), Prost

The claims were for a keyboardless computer, with a memory for storing an application, a processor for excuting the application, an application generator, and a run-time utility operating in conjunction with the processor.

Typhoon consistently argued that potential functionality was sufficient for an appartus. Drawing a fine line between potential and instantly capable became the decisive blow, allowing the court to wipe Typhoon out.

Typhoon emphasizes that the claims are not method claims, and that it is irrelevant if the function is actually performed by the device, if the device can be programmed or configured to perform the function, citing Microprocessor Enhancement Corp. v. Texas Instruments, Inc., 520 F.3d 1367 (Fed. Cir. 2008).

In Microprocessor, this court recognized that apparatus claims may appropriately use functional language.  However, the court did not deal with the situation in which an apparatus does not perform the function stated in the claim unless the apparatus is specifically so programmed or configured.  The court explained that the apparatus as provided must be "capable" of performing the recited function, not that it might later be modified to perform that function. See id. at 1375 ("[the claim] is clearly limited to a pipelined processor possessing the recited structure and capable of performing the recited functions") (emphasis omitted).  Similarly in Fantasy Sports Props., Inc. v. Sportsline.com, Inc., 287 F.3d 1108, 1117-18 (Fed. Cir. 2002), the court rejected "the proposition, as argued by Fantasy, that infringement may be based upon a finding that an accused product is merely capable of being modified in a manner that infringes the claims of a patent." See also Telemac Cellular Corp. v. Topp Telecom, Inc., 247 F.3d 1316, 1330 (Fed. Cir. 2001) ("[T]hat a device is capable of being modified to operate in an infringing manner is not sufficient, by itself, to support a finding of infringement."); High Tech Med. Instrumentation, Inc. v. New Image Indus., Inc., 49 F.3d 1551, 1555-56 (Fed. Cir. 1995) (the fact that the accused device could be altered in a way that satisfies the claim term did not lead to infringement).

Every claim's preamble went to a "keyboardless" computer. Typhoon tried to breeze past that limitation.

The term "keyboardless" appears in all of the claims in suit.  The district court construed the term to mean "without a mechanically integrated keyboard." Typhoon argues that this construction is more restrictive than the description in the specification, and that "keyboardless" means that the device does not require the use of a separate keyboard, but that the claims do not exclude devices in which a separate keyboard is present; that is, devices having an integrated mechanical keyboard that need not be used because of the touch screen. Typhoon points to the statement in the specification that the device "requires reduced use of a keyboard for entry of information and data," '057 patent, col. 2 ll. 27-28, and the statement that an external keyboard and other peripherals may be "hooked up," col. 2 ll. 59-61.  Typhoon states that the district court's definition is more restrictive than the definition in the specification.  

The district court reviewed the specification, to determine the subject matter that the inventor described as the invention.  See Renishaw PLC v. Marposs Societa' per Azioni, 158 F.3d 1243, 1250 (Fed. Cir. 1998) ("Ultimately, the interpretation to be given a term can only be determined and confirmed with a full understanding of what the inventors actually invented and intended to envelop with the claim.").

The spec specifically states:

The portable computer is keyboardless in that it does not require a keyboard for use since it is equipped with the touch screen. Nevertheless, it is provided with connections to hookup an external keyboard as well as a full range of peripherals, and is capable of displaying an interactive, simulated keyboard by means of the input/output device. 

But to ignore that the claimed computer did not have a built-in keyboard would eviscerate "keyboardless" as a claim term.

We agree with the district court that "keyboardless" means without an integrated mechanical keyboard, but accepts a touch-screen keyboard or a hooked up peripheral keyboard.

Typhoon knew which way the wind blew.

Typhoon criticizes the district court for construing the claims in order to target the accused devices and demonstrate their non-infringement.  It is not inappropriate for a court to consider the accused devices when construing claim terms, for the purpose of "claim construction" is to resolve issues of infringement.  See Pall Corp. v. Hemasure Inc., 181 F.3d 1305, 1308 (Fed. Cir. 1999) ("Although the construction of the claim is independent of the device charged with infringement, it is convenient for the court to concentrate on those aspects of the claim whose relation to the accused device is in dispute."); Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d 1565, 1580 (Fed. Cir. 1991) ("In 'claim construction' the words of the claims are construed independent of the accused product . . . . Of course the particular accused product (or process) is kept in mind, for it is efficient to focus on the construction of only the disputed elements or limitations of the claims.") 

Construing claims with an eye on the accused product is a grant to put the vital pieces in place to rule with bias. Claim construction properly should be what the inventor claimed in light of what was disclosed, irrespective of the accused product(s). Infringement should be a wholly separate analysis.

Then the court reversed blackletter law on  §112, ¶2 indefiniteness with a "means plus function" (under  §112, ¶6). The CAFC has largely eviscerated §112, ¶2 over time. In this instance, the panel reversed the trial court's invalidity ruling that means-plus-function claims referencing an algorithm are invalid where no algorithm is disclosed. Hal Wegner opines:

Distinguishing a Decade of Precedent: Ever since WMS Gaming Inc. v. Int'l Game Tech., 184 F.3d 1339, 1349 (Fed.Cir.1999), and cases such as Aristocrat Technologies Australia PTY Ltd. v. International Game Technology, 521 F.3d 1328 (Fed Cir. 2008), and Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371, 1382-85(Fed.Cir.2009), it had become hornbook law that a "means plus function" claim is indefinite under 35 USC § 112, ¶ 2, where the means-element is performed by an algorithm and no algorithm is set forth in the specification. Most recently, algorithm-free means claims have been held fatally indefinite in In re Aoyama, 656 F.3d 1293, 1296 (Fed. Cir. 2011)(Linn, J.); Stamps.com Inc. v. Endicia, Inc., 2011 WL 2417044 (Fed. Cir. 2011)(Dyk, J.); and In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303, 1315 (Fed. Cir. 2011)(Bryson, J.).

What the CAFC is actively doing in several statute sections is creating self-contradictory case law, so as to more readily excercise bias towards large corporations. The panel could indulge here because Typhoon already had the wind knocked out of it.

The "means for cross-referencing" term is in the statutory form authorized by §112 ¶ 6, whose purpose is to allow claiming of an element of an apparatus or a step of a method in terms of the function performed by that element or step.  The statute provides that a claim may state the function of the element or step, and the "means" covers the "structure, material, or acts" set forth in the specification and equivalents thereof.  In turn, the specification must contain sufficient descriptive text by which a person of skill in the field of the invention would "know and understand what structure corresponds to the means limitation." Finisar Corp. v. DirecTV Grp., Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008); see Biomedino LLC v. Waters Techs. Corp., 490 F.3d 946, 952 (Fed. Cir. 2007) ("[W]hile it is true that the patentee need not disclose details of structures well known in the art, the specification must nonetheless disclose some structure." (quoting Default Proof Credit Card Sys. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005))).

The usage "algorithm" in computer systems has broad meaning, for it encompasses "in essence a series of instructions for the computer to follow," In re Waldbaum, 457 F.2d 997, 998 (CCPA 1972), whether in mathematical formula, or a word description of the procedure to be implemented by a suitably programmed computer. 

The gratuitous expansive interpretation of §112 ¶ 6 here, creating conflicting precedents, lets the courts rule whichever way they please when close to the line.

Posted by Patent Hawk at November 4, 2011 9:44 PM | Claim Construction