166 F. Supp. 3d 364
S.D.N.Y.2016Background
- Verint sued Red Box alleging infringement of seven patents covering systems/software for recording, synchronizing, analyzing, and protecting call-center audio and screen data (Patents-in-Suit).
- The dispute focused on construction of twelve claim terms across the patents; Red Box did not propose constructions and instead argued those terms are indefinite under 35 U.S.C. § 112.
- Red Box contended eleven terms invoke means-plus-function (MPF) claiming (nonce terms like "computer application," "monitoring device," "module," "system/device/recorder operable") and that the specifications fail to disclose corresponding structure or algorithms.
- Verint argued the claim terms (e.g., "computer application," "analysis module," "monitoring device") connote sufficient structure to avoid § 112 ¶ 6 and offered a chart purporting to map algorithms to functions.
- Two claims (’798 and ’220 patents) used words of degree — "substantial"/"substantially" synchronization — which Red Box argued were indefinite for lacking objective temporal boundaries; Verint argued ordinary meaning and the specification give sufficient context.
- The Court held a Markman hearing and resolved both whether particular limitations are MPF and whether any challenged terms are indefinite for failure to disclose adequate corresponding structure or objective boundaries.
Issues
| Issue | Plaintiff's Argument (Verint) | Defendant's Argument (Red Box) | Held |
|---|---|---|---|
| Whether terms like "first computer application" and "computer application operative" invoke § 112 ¶ 6 | These terms connote sufficient structure to a POSITA (e.g., an "application" is a collection of software components); Verint provided an algorithm chart | Terms are nonce/functional ("application" is generic); presumption against MPF overcome because terms lack definite structure | Court: These are MPF limitations; "computer application" is generic and does not supply sufficient structure |
| Whether the specification discloses adequate corresponding structure/algorithms for computer-implemented MPF terms (e.g., in ’285, ’763 patents) | Specification contains high-level descriptions and Verint’s chart maps alleged algorithms to functions | Spec lacks step-by-step algorithms; high-level descriptions insufficient; skilled artisan cannot find corresponding structure | Court: No adequate algorithms disclosed; claims invoking these MPF terms (claims listed) are indefinite and invalid |
| Whether other nonce terms ("monitoring system/device," "analysis module") supply structure or invoke § 112 ¶ 6 | These are defined functionally and interact with defined data structures; some dictionary definitions provided | Nonce words ("system/device/module") are functional black boxes; specification either omits or only vaguely describes any algorithm | Court: Terms invoke MPF; specification fails to disclose algorithms; corresponding claims invalid |
| Whether "substantial/substantially synchronization" (’798 & ’220) is indefinite as a word of degree | Ordinary meaning in context and the purpose of the invention (playback that lets viewer perceive audio and screen as synchronized) provides sufficient boundary | Term lacks a temporal bright line; needs objective metric (e.g., milliseconds) to be definite | Court: Term is not indefinite; "substantial" supplies reasonable certainty in context and requires no further construction |
Key Cases Cited
- Markman v. Westview Instruments, Inc., 517 U.S. 370 (claim construction is a question of law)
- Phillips v. AWH Corp., 415 F.3d 1303 (claim construction principles; intrinsic evidence controls)
- Williamson v. Citrix Online, LLC, 792 F.3d 1339 (presumption against § 112 ¶ 6 can be overcome; nonce terms may invoke MPF)
- Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120 (definiteness standard: claims must inform with reasonable certainty)
- Microsoft Corp. v. i4i Ltd. P’ship, 564 U.S. 91 (invalidity must be proven by clear and convincing evidence)
- Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576 (intrinsic record primary in claim construction)