Eon Corp. IP Holdings LLC v. At & T Mobility LLC
785 F.3d 616
| Fed. Cir. | 2015Background
- EON sued multiple defendants alleging infringement of U.S. Patent No. 5,668,757, a patent claiming software in a local subscriber data processing station that works with a television to enable interactive functions (e.g., impulse purchases, voting, themed menus).
- Two consolidated actions (FLO TV and AT&T-related defendants) proceeded while the patent underwent reexaminations; claims were amended and later confirmed.
- Defendants moved for summary judgment of indefiniteness under 35 U.S.C. § 112 ¶ 6 asserting the specification disclosed only a microprocessor and no algorithms to support numerous means-plus-function claim terms.
- The district court held eight means-plus-function claim terms indefinite for lack of corresponding structure (no disclosed algorithms) and entered final judgment of invalidity; the AT&T case was resolved by stipulation.
- On appeal, the Federal Circuit reviewed summary judgment de novo, factual subsidiary findings for clear error, and affirmed—holding that disclosure of only a microprocessor is insufficient where the recited functions require more than basic microprocessor operations.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Whether means-plus-function claim elements are definite when the spec discloses only a microprocessor and no algorithm | EON: Katz exception applies; these functions are simple and do not require special programming, so a general-purpose microprocessor suffices | Defs: Functions are complex/custom software requiring special programming; absent disclosed algorithms the claims are indefinite | Affirmed: Katz is narrow; only basic coextensive functions (e.g., receiving, storing, processing) can rely on a microprocessor. These claims require algorithms and are indefinite |
| Whether a person of ordinary skill can supply missing algorithms so disclosure of only a microprocessor is adequate | EON: A skilled artisan could implement the functions, so spec need not disclose algorithms | Defs: Skill of artisan is irrelevant where the specification discloses no algorithm; §112 ¶6 requires disclosed corresponding structure | Held: SKA knowledge is irrelevant when spec contains no algorithm; §112 ¶6 requires the algorithm be in the spec |
| Whether Katz’s “special programming” characterization depends on complexity or availability of off-the-shelf code | EON: Functions are simple; off-the-shelf software suffices, so no special programming | Defs: Katz’s “special programming” means any functionality not coextensive with a microprocessor, regardless of complexity or commercial availability | Held: Katz means coextensiveness, not complexity; off-the-shelf code can still be special programming if it makes a general-purpose computer a special-purpose one |
| Whether district court’s factual findings (expert testimony that special code is needed) were erroneous | EON: Challenges sufficiency / weight of expert evidence | Defs: Expert evidence supports district court findings that functions require custom code | Held: No clear error in district court’s factual findings; summary judgment of indefiniteness affirmed |
Key Cases Cited
- WMS Gaming, Inc. v. Int’l Game Tech., 184 F.3d 1339 (Fed. Cir.) (algorithm is the corresponding structure for software-implemented functions; a general-purpose computer alone is insufficient)
- In re Katz Interactive Call Processing Litig., 639 F.3d 1303 (Fed. Cir.) (microprocessor can suffice only for functions coextensive with a general-purpose computer, e.g., receiving, storing, processing)
- Aristocrat Techs. Austl. Pty Ltd. v. Int’l Game Tech., 521 F.3d 1328 (Fed. Cir.) (disclosure of a general-purpose computer does not avoid functional claiming for software means-plus-function elements)
- Noah Sys. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir.) (distinguishes cases where no algorithm is disclosed from cases where an algorithm is disclosed but inadequate; SKA irrelevant when no algorithm disclosed)
- Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir.) (rejecting reliance on skilled artisan to supply missing structure for means-plus-function software claims)
- Ergo Licensing, LLC v. CareFusion 303, Inc., 673 F.3d 1361 (Fed. Cir.) (Katz exception is narrow; general-purpose computer insufficient where special programming is required)
- In re Alappat, 33 F.3d 1526 (Fed. Cir.) (explains how programming a general-purpose computer can create a special-purpose machine; influential on later §101/§112 reasoning)
- Bilski v. Kappos, 561 U.S. 593 (U.S.) (supersedes aspects of Alappat in the patent-eligibility context)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (U.S.) (reinforces definiteness requirement and public-notice function of §112)