Last week, the Federal Circuit issued an opinion in WSOU Investments LLC v. Google LLC, 2022-1064 (Oct. 6, 2023), affirming a district court judgment that Claims 9-16 of U.S. Patent No. 8,751,585 were invalid as indefinite.
WSOU asserted the ’585 Patent, which is directed to a management method for email messages, against Google in the Western District of Texas. During claim construction, the district court held the claim limitation “collaborative application management processor” was subject to a means-plus-function construction because it did not have “a generally understood structural meaning in the art or on [its] own provide structural significance.” The district court then held that the specification failed to provide adequate corresponding structure for the limitation, and that the claims were indefinite. WSOU appealed.
The Federal Circuit affirmed. In its opinion, the Court acknowledged the presumption against construing the limitation as means-plus-function because it did not use the word “means.” But the Court explained the presumption is overcome “if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.” The standard for that determination is “whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.”
The Court’s analysis started with the premise that there is no categorical rule that “processor” is or is not structural. The Court then found that the phrase “collaborative application management processor” describes functional characteristics of an undefined and uncertain processor. The Court noted that the specification discloses a “collaborative application management means” but provides no further structure of the processor. While WSOU pointed to “databases” discussed in the specification as structure, the Court held those databases were described only in functional terms.
After concluding that a means-plus function construction was appropriate, the Court then held that the specification failed to disclose “corresponding structure for performing the claimed function and [that] clearly link[ed] that structure to the function.” The Court noted that “the specification only refers to means for managing collaborative applications, such as databases that enable the recording and storing of data.” The Court determined the disclosed databases do not constitute an “algorithm” for the execution of the function, and thus held the claims were indefinite.