Defendant contended that several claims of a patent were indefinite under 35 U.S.C. §112, ¶2. The defendant argued that the term "engine for" should be construed under §112, ¶6 because engine is only discussed in functional terms. The defendant also argued that the term "engine for" did not connote sufficient structure because it does not have a well understood meaning in the art. The district court disagreed with both points and denied the motion for summary judgment.
The patent in the case involved the creation of a web-based database application that used a data dictionary. The patent teaches that the data dictionary eliminates the need for a programmer or web-developer, which reduces the cost and time associated with creating a web-based data application. Certain claims of the patent recited "an engine for" performing various tasks, such as "determining and storing" or "building and/or updating and/or running an application." The defendant contended that the "engine for" limitations were indefinite and should be construed as means-plus-function claims. It also contended that the "engine for" terms did not recite particular algorithms that performed the functions and were therefore indefinite.
The plaintiff responded that an engine is known to one of ordinary skill in the art and would be understood to be a software module. The plaintiff pointed out that the patent examiner understood that the engine was a software module. The plaintiff also argued that the "engine for" terms should not be construed as a mean-plus-function claim because the claims did not include the word "means" and therefore there is a strong presumption against construing the terms as means-plus-function claims.
The district court agreed with plaintiff. First, it agreed that the "engine for" elements were not means-plus-function terms. The district court noted that "[t]he claims reciting engines do not claim a 'means for' performing a function, which raises a presumption against construing the 'engine' claims under §112, ¶6. . . . the fact that the claims define 'engine' in functional terms does not necessarily overcome the presumption that §112, ¶6 should not apply."
Second, the district court found that the prosecution history and the extrinsic evidence demonstrated that the term "engine" is well known in the art. Noting that the Federal Circuit has "looked to the dictionary to determine if a disputed term has achieved recognition as a noun denoting structure, even if the noun is derived from the function performed," the district court concluded that the term "engine" conveys structure to one of ordinary skill in the art. "Not only did the Examiner acknowledge that an engine is a 'software application' or software module, but [defendant] apparently agrees, quoting The Dictionary of Multimedia 104 (1999), which states that an engine '[i]n software, [is] a program (such as a database engine or search engine) that performs a function.'"
Accordingly, the district court denied the motion finding that "engine" is well understood to be a software program and that §112, ¶6 does not apply.
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The district court's decision shows the difficulty in seeking to construe a claim term as a means-plus-function term if the word "means" is not used. It also shows the difficulty in seeking to have a court determine that a particular claim term is indefinite, particularly where the examiner plainly understood the term.
Stragent, LLC v. Amazon.com, Inc., Case No. 6:10 cv 225 LED-JDL (E.D. Tex. June 27, 2011)
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