On October 2017, the United States Court of Appeals for the Federal Circuit (CAFC) issued a precedential opinion in Mastermine Software, Inc. v. Microsoft Corp.  The CAFC reversed the indefiniteness determination of the United States District Court for the District of Minnesota regarding claims 1, 8 10 and 12 of U.S. Patent No. 7,945,850 and claims 1, 2, and 3 of U.S. Patent No. 8,429,518.  The CAFC declared, “these claims are simply apparatus claims with proper functional language.”

This dispute originated with Mastermine Software, Inc. asserting Microsoft Corp. infringed four claims of U.S. Patents No. 7,945,850 and three claims of No. 8,429,518 in the District of Minnesota.  Issues regarding claim construction involving “pivot tables” and claim indefiniteness arose.  After unfavorable rulings, Mastermine appealed.

On appeal, the CAFC concluded the district court had properly construed “pivot table” but reversed the court’s indefiniteness determination.  In a discussion regarding indefiniteness of the claims, the CAFC referenced IPXL Holdings, L.L.C. v. Amazon.com, Inc., a case of first impression, where the CAFC held that a single claim covering both an apparatus and a method of use of that apparatus is indefinite under section 112, paragraph 2.  The CAFC expressed concern in IPXL Holdings that claiming both an apparatus and method of using the apparatus within a single claim can make it “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].”

Further discussion by the CAFC regarding indefiniteness of the Mastermine claims referenced UltimatePointer, LLC v. Nintendo Co., where the claims at issue claimed: “‘a handheld device including: an image sensor, said image sensor generating data’ and other similar ‘generating data’ limitations.” The CAFC held these claims in UltimatePointer were unlike those in IPXL Holdings because they “make clear that the ‘generating data’ limitation reflects the capability of that structure rather than the activities of the user,” and “do not reflect an attempt to claim both an apparatus and a method, but instead claim an apparatus with particular capabilities.”

The CAFC viewed the Mastermine claims as being similar to, among other cases, UltimatePointer. The district court focused its analysis, inter alia, on claim 8 of the ’850 patent, which discloses in pertinent part,

“[a] system comprising”:
 . . . .
a reporting module installed within the CRM software application . . . ;
 . . . .
wherein the reporting module installed within the CRM software application presents a set of user selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields; . . . .

The CAFC stated, “[t]hough claim 8 includes active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the “reporting module.”

The CAFC was concerned in IPXL Holdings that claiming both an apparatus and a method of using the apparatus with a single claim can make it “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 CAFC declared, “[t]he claims at issue here [in Mastermine] do not pose this problem.  Because the claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system.”

A takeaway lesson to apply when drafting apparatus claims with functional language is to recite that actions are carried out by the apparatus rather than reciting actions are carried out by another device or a user.

Suiter Swantz IP is a full-service intellectual property firm, based in Omaha, NE, serving all of Nebraska, Iowa, and South Dakota. If you have any intellectual property questions or need assistance with any patent, trademark, or copyright matters and would like to speak to one of our attorneys please contact us.