Personal jurisdiction over plaintiff preserved upon transfer, expert evidence necessary for indefiniteness inquiry

The Fed. Cir. affirms transfer, affirms claim construction and noninfringement for method claims, and vacates and remands summary judgment of invalidity based on indefiniteness for system claims.

Elcommerce.com, Inc. v. SAP AG, et al., __ F.3d __ (Fed. Cir. Feb. 24, 2014) (NEWMAN, Plager, Wallach (dissenting in part)) (No. 09-cv-4458, E.D. Pa.) (3 of 5 stars)

TRANSFER/JURISDICTION: The Fed. Cir. held that SAP could have the case transferred from Texas to Pennsylvania, even if the Pennsylvania court would not have had jurisdiction over Elcommerce if SAP had sued there initially: "personal jurisdiction over the plaintiff, in the forum in which the plaintiff filed suit, is not lost when the entire case is transferred to a forum in which the plaintiff could have sued this defendant." Slip op. at 9-10. Venue considerations also supported the transfer.

METHOD CLAIMS: A term requiring "independent supply chain sites" was properly limited to sites operated by different organizations, largely due to a distinction the Applicants made over a single-organization prior art reference. A claim requirement that certain actions take place at each of the supply chain sites was supported by the claim language and by a statement in the Summary of the Invention. Id. at 17. The parties agreed there was no infringement under the constructions.

INDEFINITENESS OF CLAIMS WITH "MEANS" LIMITATIONS: The district court's indefiniteness was vacated because SAP had not introduced evidence (as was its burden) about how a skilled artisan would understand the patent's lengthy descriptive text, diagrams and flowcharts, and that such a person "would be unable to recognize supporting structure and acts in the written description and associate it with the corresponding function in the claim." Id. at 28. Attorney argument alone could not meet that burden in this case, particularly where Elcommerce pointed to "standard use of prose, diagrams, and flow charts" to describe "acts" for the recited functions. Id. at 25-26.

DISSENT: Judge Wallach dissented on indefiniteness, saying the claims were directed to a special-purpose computer and thus required a corresponding algorithm in the specification, which was absent, so that expert testimony was not needed or even permitted. Id. at 13 of dissent.