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IP LitigationFederal Circuit

No disclosure of algorithm for performing claimed function renders MPF limitation indefinite

July 16, 2014

IP LitigationFederal Circuit

No disclosure of algorithm for performing claimed function renders MPF limitation indefinite

July 16, 2014

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Federal Circuit affirms summary judgment of no infringement and invalidity for indefiniteness in favor of Yahoo! and affirms summary judgment of infringement and no indefiniteness on Yahoo’s counterclaims.

Augme Technologies, Inc. v. Yahoo! Inc., ___ F.___ (Fed. Cir. Jun. 20, 2014) (MOORE, Schall, Reyna) (N.D. Cal., Spero) (2 of 5 stars)

Infringement (of Augme’s Patents):  The patent involves an “embedded first code module” (e.g., for a web page) that retrieves a second code module that then executes a “service response.”  For “service response,” the parties agreed to the construction “a response that indicates whether the downloaded web page is permitted to have access to a requested function . . .,” and although the operation of Yahoo!’s system was undisputed, the Federal Circuit found a fact issue regarding whether a Yahoo! determination that there was no suitable web advertisement to show in a second code module involved making a determination about permission (especially since the patent specification showed something similar).

Nonetheless, there was no dispute that a link Yahoo! used to retrieve the ad was not “embedded” code, in large part because the first code was said to be embedded and the second code recited as “retrieved,” so embedded could not mean retrieved.  There was no DoE infringement because: (a) embedded and linked code are very different, (b) Augme’s expert did not submit proper function/way/result analysis (he missed “way”), and (c) the claims effectively excluded embedded code from being the same as linked code by reciting those terms separately (citing Dolly).

Indefiniteness of MPF Claims:  The phrase “means for assembling, at said server system, said second computer readable code module” was indefinite because merely describing the input and outputs for a “black box” shown in a figure was not a sufficient explanation of an algorithm.

Infringement (of Yahoo!’s Patent):  The Federal Circuit agreed with the district court that “server hostname” means a “network name of a server,” and refused Augme’s attempt to import two limitations into the plain-meaning construction since neither “the specification nor the prosecution history includes any lexicography or disavowal that would justify a departure from the plain meaning.”  Slip op. at 21.  Augme stipulated to infringement under the construction.

Indefiniteness:  The Federal Circuit disagreed with Augme that a claim requiring “receiving, by an ingest server, the unique identifier to the digital content,” was invalid because it only disclosed that the ingest server received “digital content,” not a “unique identifier.”  The court noted that the claim limitation was clear on its face and Augme’s indefiniteness challenge should have been framed as written description or enablement.

Related Tags

appellate
CAFC Summary
Claim Construction
Federal Circuit

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