By Chris Reaves
A massive infringement suit against the major players in the touch-screen mobile market ended in the Federal Circuit, which confirmed that two patents required that a computer have specific software installed, not merely the capacity to run said software should it be installed. In a small comfort to the patent holder, the Circuit also reversed a holding that certain patent claims were unsupported means-plus-function claims, finding that a textual description of the procedure involved qualified as an “algorithm” for Aristocrat purposes.
In 1988, prosecution began on a chain of patent applications that culminated in Patents No. 5,379,057 (‘057) and No. 5,675,362 (‘362), issued in 1995 and 1997 respectively. Both patents disclosed a “portable, keyboardless computer” with components including “a touch-sensitive screen … configured for entry of responses” and an “application generator for generating [at least one] data collection application and for creating different functional libraries”.
Typhoon Touch Technologies, Inc., the present assignee of the patents, sued numerous producers of tablets and smart phones for infringement of the patents. However, in examining the claims at issue, the district court found that some were invalid as indefinite, and regardless that none were infringed as construed. It therefore dismissed the case, and Typhoon Touch appealed the dismissal to the Federal Circuit.
Ruling 1: Devices Must Be Configured to Perform Function In Order to Infringe
Typhoon first protested the district court’s decision that, in various means-plus-function terms, the allegedly infringing structure “must perform the recited function”. Under the rule of Microprocessor Enhancement Corp. (520 F.3d 1367), Typhoon argued, it was sufficient that the structure could be configured or programmed to perform the function, and therefore devices without said programming could still infringe. The Circuit panel was unmoved, stating that although Microprocessor did allow for infringement by a structure already capable of performing a required function, it did not reach one that first needed to be “specifically so programmed or configured.”
Additionally, the district court had interpreted “keyboardless” to have its ordinary meaning: “without a mechanically integrated keyboard.” The specification stated that the device was “keyboardless in that it does not require a keyboard for use”, which according to Typhoon redefined “keyboardless” to mean it could take input without a physical keyboard even if it had one. However, although the Circuit acknowledged that a patentee may change the ordinary meaning of a term in the specification, it found no evidence of that in the instant case. To the contrary, the specification was full of criticism of the use of mechanical keyboards in general, and never once disclosed a device with an integrated keyboard.
The panel also found no importance in Typhoon’s argument that the district court “constru[ed] the claims in order to target the accused devices and demonstrate their non-infringement.” Rather, it stated, “[I]t 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.”
The Circuit therefore upheld all constructions of the district court. As Typhoon conceded that its patents were not infringed under the district court’s construction, the panel also upheld the judgment of non-infringement.
Ruling 2: Software Means-Plus-Function Claims Require Only a Procedure
In a Pyrrhic victory for Typhoon, the Circuit reversed the decision of invalidity for three claims that included a “means for cross-referencing said responses…” The district court had held these to be indefinite under § 112 ¶ 2, finding no “algorithm” in the description to perform the function, as required for software means-plus-function claims by Aristocrat Technology (521 F.3d 1328). However, the Circuit found the district court’s interpretation of “algorithm” too restrictive in the context of computing. A step-by-step procedure was sufficient – computer code was certainly not required – and although the Typhoon patents did not disclose this procedure through a flow chart, a “prose” disclosure in the text of the description served the same purpose.
“[T]he amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention.” Because the specification described the steps of the cross-referencing procedure in terms that “a programmer of ordinary skill” could implement, the Circuit found the claims were supported and reversed the district court’s holding of indefiniteness. It was no “concession,” as the district court felt it was, that Typhoon admitted “the specific algorithm connoting the structure of the means for cross-referencing element is not explicitly disclosed in the specification.”
The Circuit’s requirement of specific configuration seems not only sound but necessary, at least in the context of hardware and software. Modern computers are quite capable of being programmed to run any number of procedures. Once one has a computer meeting the hardware elements of a claim, no matter how general those elements, one can always install the software elements later, but that should not make the computer alone an infringement. Presumably, the software is part of what makes the patent patentable, or the prosecutor would have patented the hardware alone, so a valid construction should not effectively make the software elements moot. (Of course, if the hardware itself is specially designed to run the software in question, contributory infringement principles apply even without a software installation. But this assumes the hardware has no other uses, and here it did.)
The opinion did not even address an argument that Typhoon tried to emphasize during oral arguments: that the patent claimed priority back to 1988, when hardware capable of executing the software (now ubiquitous) was itself new and arguably inventive. This issue was beside the point. Typhoon did not patent the hardware itself; it patented the hardware combined with software (at minimum, the “application generator”). Again, if it did so because the hardware by itself was not new and unobvious even in 1988, removing the software requirement would have been a gross misreading of what the Patent Office had granted. If it did so because the prosecutors were too focused on the software and did not consider the potential of the hardware alone, this serves as a lesson to future prosecutors: always remember to claim pieces as well as the whole, if the pieces are also inventive. One never knows for sure which pieces might be discarded and which might come to dominate the market.
In regards to the “keyboardless” definition, the lesson is simply to remember that CCS Fitness (288 F.3d 1359) asks you to “clearly” redefine terms if you plan to do so. Do not count on a court to pick up on subtleties and make the inference you want; be explicit with language such as “we define the term X herein to mean…” Alternatively, use more natural terminology in the first place, such as, in this case, “capable of keyboardless data entry.”
In an interesting aside, the Circuit endorses a court molding its construction around the defendant’s claims, or at least focusing on the most applicable elements. This approach would mean that the construction of a claim may vary depending on its first alleged infringer. Issue preclusion applies to Markman constructions, albeit inconsistently and not in all circumstances (see RF Delaware (326 F.3d 1255), which applies a regional circuit’s law of preclusion). And invalidation of a claim is binding in all courts even if a different construction would have saved the same claim. It may be wise, therefore, to consider where and how a patent’s boundaries will be tested before deciding which infringing device to sue over first.
As is often the case, even the patent owner’s victories show where it could have drafted a better patent. As Typhoon stated in oral arguments, had the cross-referencing procedure disclosed in the description been converted to a figure or flow chart, “we wouldn’t be here.” The attorney meant it as an argument in support of validity, but it’s also a warning to future prosecutors: next time, include the flow chart. Sometimes, it is the difference between a procedure a skilled programmer can understand and one she can’t, and even if not, it helps the judge understand it.
The opinion is available at: http://www.cafc.uscourts.gov/images/stories/opinions-orders/09-1589.pdf
Oral arguments may be heard at: http://oralarguments.cafc.uscourts.gov/default.aspx?fl=2009-1589.mp3