Function Media, L.L.C v. Google Inc., 708 F.3d 1310

Background

FM sued Google for infringement of the ’045, ’025, and ’059 patents in the Eastern District of Texas; inventions automate ad formatting across multiple media outlets.
The patents center on a central computer coordinating sellers, media venues, and buyers, using a Presentation Generating Program and a rules database.
Claim 1 of the ’025 patent requires interfaces, two databases, and a controller to create, process, and publish ads in compliance with venue rules.
The district court held the ’045 patent indefinite for lack of disclosed structure for the means-plus-function term “means for transmitting.”
A jury found the asserted claims invalid and not infringing; JMOL later narrowed the case to four remaining valid claims, none of which were infringed.
FM appeals challenging claim construction, trial fairness, and verdict irreconcilability; this court affirms.

Issues

Issue	Plaintiff's Argument	Defendant's Argument	Held
Indefiniteness of the ’045 patent	FM argues the PGP provides sufficient structure for the transmitting function.	The specification lacks an algorithm/structure for the means-plus-function.	Indefinite; court affirmed district court on indefiniteness.
Meaning of ‘creating’ and ‘processing’ in ’025	FM contends processing uses inputted information to create ads.	Processing operates on the electronic ad to comply with rules; creation precedes processing.	Court adopted district court construction; ads created before processing; affirmed.
Meaning of ‘selection’ in ’025	FM proposed user-input to select venues; Google posited seller/system-level selection.	Google argues only the seller’s input selects venues; FM lacks final say.	Court upheld FM’s construction; no new trial due to claim-construction issues.
Meaning of ‘publishing’ in ’025	FM contends ads can be delivered directly to buyers.	Publishing must send ads to internet media venues for buyer access.	Court upheld construction requiring ads be published to venues, not merely delivered to buyers.
Irreconcilability of verdicts	Jury impermissibly conflicted between infringement and prior-art invalidity.	No waiver; verdicts can be reconciled under Rule 49(a) or waived if not objected.	Waived; court found no fatal irreconcilability; affirmed verdicts.

Key Cases Cited

O2 Micro International v. Beyond Innovation Tech. Co., 521 F.3d 1351 (Fed. Cir. 2008) (claims scope disputes must be resolved by the court prior to jury instruction; improper jury submission of scope issues)
Verizon Servs. Corp. v. Cox Fibernet Virginia, Inc., 602 F.3d 1328 (Fed. Cir. 2010) (distinguishes improper post-trial claim-construction issues from pre-trial disputes; waiver rules)
Railroad Dynamics, Inc. v. A. Stucki Co., 727 F.2d 1506 (Fed. Cir. 1984) (special verdict vs. general verdict distinctions; application to inconsistency issues)
Comaper Corp. v. Antec, Inc., 596 F.3d 1343 (Fed. Cir. 2010) (recognizes special verdict form treatment and its impact on appellate review)
L&W, Inc. v. Shertech, Inc., 471 F.3d 1311 (Fed. Cir. 2006) (waiver analysis for verdict-inconsistency under Fifth Circuit rules)
Markman v. Westview Instruments, Inc., 517 U.S. 370 (Supreme Court 1996) (claims construction governs interpretation of terms; central to patent law)
Noah Systems, Inc. v. Intuit, Inc., 675 F.3d 1302 (Fed. Cir. 2012) (software means-plus-function require disclosed algorithm or structured disclosure)
Blackboard, Inc. v. Desire2Learn, Inc., 574 F.3d 1371 (Fed. Cir. 2009) (means-plus-function requires disclosed structure beyond mere function)
Typhoon Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376 (Fed. Cir. 2011) (algorithm or structure disclosure required for special-purpose computer implementations)
Bowers v. Baystate Techs., Inc., 320 F.3d 1317 (Fed. Cir. 2003) (set forth general standard for proving infringement)
i4i Ltd. P’ship v. Microsoft Corp., 598 F.3d 831 (Fed. Cir. 2010) (review of JMOL and sufficiency of evidence)