Katz v. American Airlines, Inc.
639 F.3d 1303
| Fed. Cir. | 2011Background
- Katz filed 25 actions later consolidated in the Central District of California (MDL) asserting 1,975 claims from 31 patents against 165 defendants; groupings: Statistical Interface, Conditional Interface Plus, Dual Call Mode, and Voice-Data patents with four shared specifications.
- District court limited Katz to initially select up to 40 claims per defendant group, later narrowing to 16 per group, with total cap of 64 claims; proviso allowed adding non-duplicative claims.
- Katz added claims within the 64-claim framework but sought severance and stay for unselected claims, arguing due process violations and potential preclusion.
- Court denied severance due to lack of showing that unselected claims raised unique issues; Katz challenged due process, but court found burdens reasonable and not prejudicial.
- District court granted summary judgment on numerous asserted claims, holding them invalid or noninfringing; judgments entered for some defendants while related actions remained pending.
- The appeal challenges claim-severance decisions, indefiniteness and written-description rulings, priority/obviousness determinations, and various claim-construction issues across multiple patents.
Issues
| Issue | Plaintiff's Argument | Defendant's Argument | Held |
|---|---|---|---|
| Due process in claim selection and severance | Katz argues unselected claims should be severed/stayed to avoid preclusion | Court reasonably allocated burden; no due process violation | No due process violation; severance denied |
| Means-plus-function indefiniteness under 112 ¶ 6 | Claims lack algorithm; general-purpose computer insufficient | Some claims may be adequately linked to disclosed algorithms | Indefiniteness affirmed for some claims; vacated/remanded for others to construe functions and apply correct rule |
| IPXL concerns and system vs. method claims | IPXL-like ambiguity renders system/method claims indefinite | IPXL applied to prevent ambiguity | IPXL-based indefiniteness sustained for claims 1, 2, 83 of the 893 patent; other IPXL-related aspects discussed |
| Written-description sufficiency | Specification lacks disclosure of claimed features (e.g., visual display of caller-entered data) | Specification supports the claimed features or limits thereof | Written-description invalidity sustained for certain Statistical Interface claims; affirmed/ remanded as appropriate for others |
| Obviousness/priority determinations | Szlam/Yoshizawa priority and combination leg increased validity risk | References render claims obvious; priority arguments insufficient | Affirmed obviousness rulings for several claims; priority findings for others affirmed; remand where needed |
Key Cases Cited
- WMS Gaming, Inc. v. International Game Technology, 184 F.3d 1339 (Fed. Cir. 1999) (means-plus-function limits tied to algorithm disclosure; special-purpose computer required in some cases)
- Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008) (application of WMS/Harris to require disclosed algorithm; indeterminate without it)
- Harris Corp. v. Ericsson Inc., 417 F.3d 1241 (Fed. Cir. 2005) (computer-implemented means-plus-function requires disclosed algorithm)
- IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) (claims combining system and method aspects can be indefinite)
- Net Money-IN, Inc. v. VeriSign, Inc., 545 F.3d 1359 (Fed. Cir. 2008) (limits on means-plus-function where only a general computer is disclosed depend on algorithm disclosure)