The Software IP Report
Use of Passive Voice Insufficient to Connote Structure in MPF Analysis
The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite. The present action arose from a declaratory judgement action brought about by Zoho alleging that it did not infringe Reissued Patent No. RE43,633.
While both parties agreed that 35 U.S.C. ¶ 6 (means-plus-function) applied, the parties diverged on the question of whether the specification disclosed sufficient structure for the compile function. During a means-plus-function analysis, the court engages in a two-step inquiry to construe the claim limitations at issue as set forth in Williamson v. Citrix Online, LLC. First, the court identifies the claimed function, and, second, the court determines “what structure, if any, disclosed in the specification corresponds to the claimed function.” The Federal Circuit, in Noah Sys., Inc. v. Intuit, Inc., has stated that a structure corresponds to the claimed function if “the specification or the prosecution history clearly links or associates the structure to the function recited in the claim.”
In its proposed claim construction, the Patent Owner, Sentius, alleged that the corresponding structure was “a computer having a visual editor and user interface programmed to perform the recited functions, and equivalents thereof.” Zoho countered that the specification and prosecution history failed to identify any structure making the corresponding claims indefinite under 35 U.S.C. ¶ 2.
In its analysis, the court stated that a “computer … programmed to compile” was insufficient structure, and that, if the Patent Owner wanted to rely on a specially programmed computer, the Patent Owner had to specify an algorithm the computer is programmed to perform per WMS Gaming, Inc. v. Int’l Game Tech.
The court noted that the only portion of the Specification for the ‘633 Patent that references the compile function used a passive voice. The referenced portion of the Specification is referenced below:
After linking, the text and references are compiled. During compilation, the cut text is reassembled to create an image of the text that the end user sees. At this point additional formatting may be applied to the text for final display. Indices of the component words and phrases are built with links to the reference material and duplicate references are consolidated to conserve memory and storage requirements. A key feature of the system format is the method by which the original book text is indexed and linked with the external references. During the compile process an image of the text is created. When the image is created, the cuts are indexed based upon the position offset from the beginning of the text. The start and end points of the cut text are recorded in a look-up 35 table along with the links to external references. The number and type of links for any component is dynamic. This means that a single entry could have several different references attached to it, each containing different forms of data.
(Emphasis used to highlight passive voice referenced by the court in its order).
The court further noted that the Specification described several functions related to the user interface – however, image compilation was not of one these functions.
Since the court noted that the intrinsic evidence, e.g., prosecution history and the Specification, failed to disclose a structure for “compiling the source material image,” the court noted that the Patent Owner could not rely on extrinsic evidence, e.g., expert testimony, to fill in the gaps per the Federal Circuit holding in Noah Sys.
As a result, the court found the claims reciting “means for compiling the source material image from at least the plurality of discrete pieces” indefinite.