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MasterMine Software, Inc. v. Microsoft Corp.

No IPXL Problem in System Claims Reciting Structures Performing Active Functions

MasterMine Software, Inc. v. Microsoft Corp., 2017 U.S. App. LEXIS 21479 (Fed. Cir. Oct. 30, 2017) (Newman, O’Malley, STOLL) (D. Minn.: Schlitz) (4 of 5 stars)

Fed Cir part-affirms, part-reverses judgment of noninfringement and invalidity. The district court did not err in requiring that the “pivot tables” in MasterMine’s claims actually display data. The opinion cites the specification, and notes that during prosecution the applicant made reference to “dragging and dropping” elements into pivot tables. This fell short of showing unmistakable disclaimer, but was support to the district court’s construction. The district court erred, however, in holding five MasterMine claims indefinite as “claiming two subject-matter classes” (i.e., an IPXL-type claiming of both a method and a system). MasterMine’s claims did not introduce method elements into system claims, but were “simply apparatus claims with proper functional language.” Op. at 11. The opinion surveys Fed Cir authority on the issue and concludes that the claims’ use of “wherein” clauses containing active verbs (e.g., “wherein the reporting module . . . presents a set of user-selectable database fields”) merely claimed that the system would have structure “capable of performing the recited functions.” Id. at 16 (citing Microprocessor Enhancement, 520 F.3d 1367 (Fed. Cir. 2008)). Further, the claims did not recite activities performed by the user, and their use of functional language was “specifically tied to structure.” “Because the claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system.” Id. at 17.

KEYWORDS: INFRINGEMENT (NO); CLAIM CONSTRUCTION; INVALIDITY (NO); INDEFINITENESS (NO)