MasterMine v. Microsoft (Fed. Cir. 2017)
On appeal here, the Federal Circuit has reversed a lower court indefiniteness finding — holding that the claims were not improperly simultaneously directed to both an apparatus and a method of using the apparatus. In my view, the decision here continues the Federal Circuit’s implicit rejection of the Supreme Court’s Nautilus decision.
I have reproduced a substantial portion of disputed claim 8 of U.S. Patent No. 7,945,850 below. You’ll note the claim is directed to a “system” but then includes a number of limitations that appear to require action. Notably, at points the claim uses standard “adapted to” language (“reporting module … is adapted to … examine a schema”) but elsewhere seemingly requires actual actions (“wherein the reporting module … displays a list of the report … presents a set of user-selectable database fields … receives from the user a selection … and generates a database query”).
In IPXL, the Federal Circuit rejected a similar claim – finding it indefinite under 35 U.S.C. 112 since it was “unclear whether infringement . . . occurs when one creates a[n infringing] system, or whether infringement occurs when the user actually uses [the system in an infringing manner].” The claim in IPXL likewise was directed to a “system” with certain input means, but then required that “the user uses the input means” to accomplish some result.
The district court relied upon IPXL in holding MasterMine claim was directed to an apparatus, but required a series of steps to be performed — and, as a result was indefinite.
On appeal, the Federal Circuit rejected the district court’s indefiniteness analysis – holding instead that “these claims are simply apparatus claims with proper functional language.” In distinguishing IPXL, the court writes:
Though claim 8 includes active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the “reporting module.” . . . These claims are also distinguishable from those at issue in IPXL Holdings and Katz, as the claims here do not claim activities performed by the user.
In reaching the decision here, the court cited three additional post-IPXL decisions with similar results: MEC, HTC, and UltimatePointer. As here, the court found in those decisions that the recited verb-forms should be read as capability limitations rather than requirements for action.
Although the Supreme Court did not particularly address the mixed-claim-type issue in Nautilus (2014)(a post-IPXL decision) the court lowered the standard for invalidating a claim on indefiniteness grounds. Prior to Nautilus, claims would only be invalidated if the the claim scope was “insolubly ambiguous”; now, claims are invalid if they fail to define the scope of the invention with reasonable certainty.” Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014). A major failing of the decision here (as well as the prior UltimatePointer decision) is to review the issue in light of Nautilus.
Disputed Claim 8:
8. A system comprising:
a database adapted to store customer relationship management (CRM) records containing CRM data;
a programmable processor adapted to execute a CRM software application and a spreadsheet software application;
a reporting module installed within the CRM software application …
wherein the reporting module … is adapted to … examine a schema …
wherein the reporting module … displays a list of the report …
wherein the reporting module … presents a set of user-selectable database fields … receives from the user a selection … and generates a database query …
wherein the reporting module invokes the spreadsheet software …
wherein, in response, the spreadsheet software application generates the pivot table …
Note — the federal circuit also affirmed a narrow claim construction. On remand, the district court will need to determine whether the newly validated claims are infringed.