By Dennis Crouch
elcommerce v. SAP (Fed. Cir. 2014)
Facing another functional claim limitation case, the Federal Circuit here vacated the lower court holding that the means-plus-claims were invalid as indefinite for failing to teach sufficient corresponding structure in the patent specification. Particularly, the court here holds that, in this case, attorney-argument was insufficient to prove invalidity and rather than some amount of extrinsic evidence (such as expert testimony) was necessary to provide the necessary clear-and-convincing evidence.
Patent claims ordinarily recite particular “structure, material, or acts” as elements that both provide for the requisite inventive step and also materially limit the scope of rights. However, since 1952 the patent act has provided an express avenue for drafting patent claims using functional – instead of structural – limitations. Under 35 U.S.C. §112(f), a claim element “may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof.” To a lay reader, these means-plus-function claims appear quite broad. For instance a claimed “means for connecting elements A and B” seemingly covers any method or structure that accomplishes the claimed function. However, the statute itself requires that means-plus-function claims be given a much more limited scope. That is, the statute goes-on to say that a means-plus-function claim “shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.” Id. Thus, to know the meaning of a claimed “means for connecting,” we must look to the patent specification to see what particular connecting mechanisms were disclosed and the scope of the claim would be limited only to those disclosed structures and their equivalents. The result here is that means-plus-function claims typically have a scope that is much narrower than one might expect on the initial reading.
In recent years, a substantial number of means-plus-function claims have been invalidated as lacking definiteness under § 112(b). (I.e., invalid as indefinite). Courts follow the following logic: (a) The statute requires that a means-plus-function element be defined according to corresponding structure found in the specification; (b) If no corresponding structure is found in the specification then the term cannot be defined and (c) is therefore invalid as indefinite.
In this case, the asserted claims are directed to a system for monitoring a supply chain. Representative claim 37 in the case has nine-different means claim elements, such as a “means for monitoring” supply data; “means for extracting” supply data; “means for translating” the data into a common format; etc. As part of its claim construction, the district court found that the specification failed to include any structure for any of the claimed means and subsequently, that the claims were invalid and indefinite. One problem with the district court’s analysis is that it doesn’t come to terms with the reality that “structure” is to be seen in the eyes of one skilled in the art.
Now, the standards applied here are quite messy. We know that patents are presumed valid and, in Microsoft v. i4i, the Supreme Court explained that presumption may only be overcome with clear and convincing evidence. In a concurring opinion, Justice Breyer (joined by Justice Scalia) raised the point that the clear-and-convincing standard ordinarily applies to factfinding and questions of fact and not to questions of law. Justice Breyer writes: “Where the ultimate question of patent validity turns on the correct answer to legal questions—what these subsidiary legal standards mean or how they apply to the facts as given—today’s strict standard of proof has no application.” Ignoring that advice (sub silento), the Federal Circuit has ruled that indefiniteness must be proven with clear and convincing evidence. See TecSec, Inc. v. IBM, 731 F.3d 1336 (Fed. Cir. 2013)(Linn, J.). That conclusion draws its foundation from the 1987 Panduit decision stating that the presumption of validity is applicable to all validity challenges. Panduit v. Dennison, 810 F.2d 1561 (Fed. Cir. 1987) (Markey, J.). Drawing-in the claim construction issue, by statute, identifying the “corresponding structure” of a functional element is a claim construction issue. Such an element “shall be construed to cover the corresponding structure.” And, as patent litigators are well aware, claim construction is also a question of law.
In her opinion, Judge Newman does not address any of the aforementioned conflict except for the requirement that indefiniteness be judged with clear and convincing evidence. With that framework, the opinion notes that the only way “a general purpose judge could ascertain the position of persons of skill in the art and conclude that there is not a shred of support for any of the eleven interrelated means-plus-function claim limitations. . . . The burden was on SAP to prove its case, and in the absence of evidence provided by technical experts who meet the Daubert criteria there is a failure of proof. Attorney argument is not evidence.” Here, Judge Newman’s statement regarding “not a shred of support” goes beyond the clear-and-convincing standard, but her point is made – expert testimony is necessary here.
To be clear, the Federal Circuit does not expressly hold that expert testimony is always required. We do not of course hold that expert testimony will always be needed for every situation.” However, the court does not provide any explanation of when it might not be necessary.
In prior cases, the Federal Circuit has held that claim construction and indefiniteness findings can be made without expert testimony. See, e.g., Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012); Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005). The majority does not address these prior precedents. However, Judge Wallach does in his dissenting opinion.
The issue in this case is whether expert testimony is required to prove indefiniteness of a means-plus-function term when the specification contains no corresponding structure. This court answered “no” in Noah, explaining that expert testimony is not required where the specification contains no algorithm corresponding to each recited function. When there is an identifiable algorithm, however, expert testimony may be helpful in determining whether the algorithm is adequate corresponding structure in the view of a skilled artisan. Id. . . .
Indeed, indefiniteness is part of claim construction, both of which are questions of law. . . . Just as there is no requirement for expert testimony when construing means-plus-function claims to cover the corresponding structure, expert testimony is not needed to hold the claims indefinite when no structure is disclosed.
Judge Wallach’s point parallels what I discussed above – that these are questions of law where expert testimony does not appear to be a requirement. However, his perspective also appears lacking because he essentially ignores the requirement that these questions be viewed from the standpoint of one of skill in the particular area of technology.