Microsoft Invalidates Motorola's Patent Claims Where Means-Plus-Function Limitations Were Found Indefinite

February 27, 2013

In this patent infringement action between Microsoft and Motorola, Motorola asserted certain claims of various patents against Microsoft, including claims that included "means for decoding" and "means for using" limitations. Motorola asserted that Microsoft's Windows 7 operating system and Microsoft's Internet Explorer 9 infringed the asserted claims of the patents-in-suit. Microsoft moved for partial summary judgment that the claims that included these means-plus-function limitations were indefinite under 35 U.S.C. §112.

As explained by the district court, "[a]t a high level, the Patents-in-Suit disclose systems and methods for encoding and decoding a bitstream (or sequence) of digital video data.3 (See generally '374 Patent; '375 Patent; '376 Patent.) The Patents-in-Suit explain that a picture in a digital video sequence can either be encoded as a "frame," comprising consecutives lines of the picture, or as two "fields," with the top field comprising the odd-numbered lines of the picture and the bottom field comprising the even-numbered lines of the picture. ('374 Patent at 1:42-58.) While encoding a picture in frame or field mode was done in prior art on a picture-by-picture basis (id. at 4:17-34), the summary of the invention states, "[t]he method entails encoding and decoding each of the macroblocks in each picture in said stream of pictures in either frame mode or in field mode." (Id. at 2:58-60 (emphasis added).)"

Microsoft contended that the "means for decoding" and "means for using" elements recited were invalid as indefinite because the Patents-in-Suit do not adequately describe a corresponding structure. As a result, Microsoft asked the court to grant partial summary judgment of invalidity for claims of the Patents-in-Suit using the "means for decoding" and "means for using" elements.

After discussing that both Microsoft and Motorola agreed that these phrases constituted means-plus-function claim limitations, the district court explained that "[m]eans-plus-function claim limitations must satisfy the requirements of 35 U.S.C. § 112 ¶ 2. S3 Inc. v. nVIDIA Corp., 259 F.3d 1364, 1367 (Fed. Cir. 2001). Paragraph 2 of section 112 of title 35 of the United States Code states, "[t]he specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention." 35 U.S.C. § 112 ¶ 2. Whether a claim complies with the definiteness requirement of 35 U.S.C. § 112 ¶ 2 "is a legal conclusion that is drawn from the court's performance of its duty as the construer of patent claims." Personalized Media Commc'ns, LLC v. Int'l Trade Comm'n, 161 F.3d 696, 705 (Fed. Cir. 1998); see also nVIDIA Corp., 259 F.3d at 1367 (citation omitted)."

The district court then found that the disclosure of a decoder on its own was insufficient to make the limitation definite. "The court finds the disclosure of a decoder on its own to be insufficient structure for another reason: the decoder is defined functionally by the specification. Although the specification provides the previously discussed examples of a decoder (ASIC, FPGA, CO-DEC, and DSP), in the very same sentence, the specification states that the decoder may also be "some other electronic device that is capable of encoding the stream of pictures." ('374 Patent at 4:62-64.) Indeed, in the only place the specification affirmatively defines the decoder it states: "The term 'decoder' will be used to refer expansively to all electronic devices that decode digital video content comprising a stream of pictures." (Id. at 1-3.) Through this language, the specification clearly defines the identified decoder structure in a functional manner. Without more, a decoder--defined as all electronic devices that decode video content--cannot be said to provide sufficient structure for the function of "decoding" portions of an encoded picture, as required by the Claims-at-Issue. Because neither the examples of a decoder, nor the definition of a decoder, identified in the specification amount to anything more than a programmed general computer or a functional description, the court requires disclosure of an algorithm corresponding to the "means for decoding" and "means for using" limitations."

The district court also found that: "Here, Motorola employed "means-plus-function" claiming and then defined the corresponding structure as anything that performs the claimed function. Simply put, this amounts to an unbounded claim encompassing all means for performing the decoding function. While it is undisputed that the question of whether a claim is indefinite is based on how the claim limitation would be understood by one of skill in the art, "the testimony of one of ordinary skill in the art cannot supplant the total absence of structure from the specification." Default Proof Credit Card Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005); see also Biomedino, LLC v. Waters Techs. Corp., 490 F.3d 946, 950-53 (Fed. Cir. 2007). The prohibition against using expert testimony in this manner is a direct consequence of the requirement that the specification itself adequately disclose the corresponding structure. AllVoice Computing, 504 F.3d at 1240 ("The test for definiteness asks whether one skilled in the art would understand the bounds of the claim when read in light of the specification.") (citation omitted). Finally, as stated, decoding and encoding are entirely different functions. Thus, even were a person of ordinary skill in the art able to devise an algorithm for decoding the function from the disclosed encoding description, that alone does not rescue the disputed means limitations from indefiniteness. Were that the case, any means-plus-function limitation could be saved from indefiniteness by an expert's testimony that he or she could have written computer code to perform the recited function based on unrelated disclosures in the specification. The specification needs to provide a decoding algorithm from which to base the understanding of one skilled in the art, and the court can find no such algorithm within the specification. Instead, the "means for decoding" limitations the function from the disclosed encoding description, that alone does not rescue the disputed means limitations from indefiniteness. Were that the case, any means-plus-function limitation could be saved from indefiniteness by an expert's testimony that he or she could have written computer code to perform the recited function based on unrelated disclosures in the specification. The specification needs to provide a decoding algorithm from which to base the understanding of one skilled in the art, and the court can find no such algorithm within the specification. Instead, the "means for decoding" limitations claim all corresponding structure under the sun by expansively defining the function in the specification as anything that decodes digital data. This definition renders the "means for decoding" limitation invalid for indefiniteness."

Accordingly, the district court granted the motion for partial summary judgment.

Microsoft Corp. v. Motorola Inc., et al., Case No. C10-1823JLR (W.D. Wash. Feb. 7, 2013)

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