04/17/14

Elcommerce.com, Inc. v SAP AG: Specification Adequacy Determined by Evidence of Knowledge of Person of Ordinary Skill


Category: 112 - Means Plus  
 
 
 
 By: John Kirkpatrick, Contributor 
 
TitleElcommerce.com v. SAP AG, No. 2011-1369 (Fed. Cir. Feb. 24,2014).
IssueSAP argued [...] that the means-plus-function terms in [U.S. Patent No. 6,947,903 ("the ’903 patent")] do not have supporting “structure or acts” in the specification, [and, therefore,] SAP could satisfy its burden on indefiniteness without expert testimony or other evidence of the existing knowledge in the field of the invention. SAP urged that Federal Circuit precedent does “not require” such evidence, citing [a prior case stating] that “the testimony of one of skill in the art cannot supplant the total absence of structure from the specification.”
Elcommerce.com at *20-21 (text added, internal citations omitted).
HoldingsWithout evidence, ordinarily neither the district court nor this court can decide whether, for a specific function, the description in the specification is adequate from the viewpoint of a person of ordinary skill in the field of the invention. We do not of course hold that expert testimony will always be needed for every situation; but we do hold that there is no Federal Circuit or other prohibition on such expertise.
Id. at *29 (citation removed).
 
 
 
 
Procedural HistoryElcommerce [owns the ’903 patent], directed to a system and method of monitoring a supply chain of components in order to coordinate and stabilize the supply of components from various producers. Elcommerce brought suit in [...] the Eastern District of Texas, charging [SAP] with patent infringement. SAP filed a declaratory judgment counterclaim that the ’903 patent is invalid, unenforceable, and not infringed. On SAP’s motion, the district court transferred the case to [...] the Eastern District of Pennsylvania. [...] The Pennsylvania district court construed the claims of the ’903 patent, and [...] entered summary judgment that the asserted system claims [...] are invalid for indefiniteness under 35 U.S.C. §112 ¶2, based on failure to comply with the requirements of §112 ¶6.
Elcommerce.com at *1 (text added).
 
 
 
Legal Reasoning (Newman, Plager, Wallach)
Background
Summary of the ’903 PatentThe monitoring [of the ’903 patent] is for [...] facilitating and coordinating the supply of components provided by separate entities [...], such as when entities in the chain maintain their supply-related data in different or uncoordinated formats [...]. The ’903 patent [...] collects information from each supply site, places the information in a common format, makes the coordinated supply information available to the entities in the supply chain, and detects and alerts the entities to any supply problem.
Elcommerce.com at *11 (text added).
Legal Standard: Indefiniteness§112 ¶2. The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Id. at *17-18.
Legal Standard: Functional Claiming §112 ¶6. An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.
Id. at *18.
Findings Must be Based on Evidence
Functional Claiming Indefinite if Unrecognizable by a Person of Ordinary Skill in the ArtPrecedent elaborates that “[u]nder 35 U.S.C. § 112 ¶2 and ¶6, therefore, ‘a means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and associate it with the corresponding function in the claim.’” [...] “The amount of detail that must be included in the specification depends on the subject matter that is described and its role in the invention as a whole, in view of the existing knowledge in the field of the invention.” [S]ection 112 does not require the drafter “to encumber the specification” with information known to a person of skill in the field of the invention; nor does section 112 require that the specification reproduce information routinely possessed by persons in the field of the invention.
Elcommerce.com at *20, 24 (text added, internal citations omitted).
A Flow Chart May Provide Sufficient Structure to a Person of Ordinary Skill in the Art[Having agreed with SAP] [...] the district court further erred by ignoring the protocols of claims for computer-implemented systems set forth in [Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, (Fed. Cir. 2008), which states that] the patent may describe the system "in any understandable terms including as a mathematical formula, in prose, or as a flow chart, or in any other manner that provides sufficient structure[,]" [by overlooking] elcommerce’s standard use of prose, diagrams, and flow charts. [...] [W]hen the structure or acts that perform the function “would be ‘well within the skill of persons of ordinary skill in the art,’ such functional-type block diagrams may be acceptable and, in fact, preferable if they serve in conjunction with the rest of the specification to enable a person skilled in the art to make such a selection and practice the claimed invention with only a reasonable degree of routine experimentation.” However, despite page-after-page of text and flow-charts and block diagrams illustrating supporting structure, the district court invalidated all of the claims that were written in terms of §112 ¶6.
Id. at *24-25 (text added, internal citations omitted).
The Knowledge of a Person of Ordinary Skill in the Art Must be Based on Evidence[Because] SAP did not present evidence regarding the knowledge of persons of skill in the field of the invention[,] [t]he district court received no evidence on whether such persons would “ ‘know and understand what structure corresponds to the means limitation.’ ” [...] The burden was on SAP to prove by clear and convincing evidence that a person of ordinary skill in the field of the invention would be unable to recognize supporting structure and acts in the written description and associate it with the corresponding function in the claim. [T]he adequacy of a particular description is a case-specific conclusion, not an all-purpose rule of law. Findings as to what is known, what is understood, and what is sufficient, must be based on evidence.
Id. at *28-29 (text added).
Conclusion
Attorney Argument is not Evidence[T]he district court erred in granting summary judgment without a proper evidentiary basis for its conclusion. [I]n the absence of evidence provided by technical experts [...] there is a failure of proof. Attorney argument is not evidence. We vacate the district court’s rulings on the system claims, and remand for application of appropriate evidentiary standards and judicial procedures.
Elcommerce.com at *29-30 (text added).
 
 
WALLACH, Circuit Judge, dissenting-in-part. Elcommerce.com, Wallach Op. at *1.
No Expert Testimony Required Because No Algorithm is Disclosed[In Noah Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012),] this court affirmed the exclusion of expert testimony from the indefiniteness inquiry when there was a total absence of corresponding structure. As in Noah, the asserted means-plus-function claims in this case are directed to a special-purpose computer and thus require a corresponding algorithm in the specification. As in Noah, no algorithm is disclosed. Such “total absence of structure” renders the claims invalid for indefiniteness, and expert testimony is neither required nor permitted to supply the absent structure. 
Elcommerce.com, Wallach Op. at *1-2 (text added, emphasis removed, internal citations omitted).
Disclosure Does Not Explain How the Function is AccomplishedAn algorithm must “provid[e] some detail about the means to accomplish the function,” [however,] the specification’s description of the [structures cited by Elcommerce] "simply describes the function to be performed[.]” [...] Nor do the flow charts provide the requisite algorithm. Figure 1E [(a block diagram)] [...], for example, does no more than restate other means-plus-function elements. [...] The [first] box [of Fig. 1E, which is labeled "extract data"] does not explain how [the claimed "means for extracting"] is accomplished, nor do the other boxes in Figure 1E provide any guidance in this respect.
Id. at *8-9 (text added, internal citations omitted).
 
 
 
 
Contributor's Note
No Abuse of Discretionary Authority in the Transfer to Pennsylvania
Jurisdiction Determined at Time Complaint Filed and Preserved When TransferredElcommerce appeals the transfer, on the grounds that it is the defendant to SAP’s declaratory judgment counterclaims that were filed in Texas and included in the transfer to Pennsylvania, and that judgment cannot be entered against a defendant or its property over which the court does not have personal jurisdiction. Elcommerce states that it does not have minimum contacts [...] with the state of Pennsylvania.
Elcommerce.com at *4 (text added).
[...] [However, jurisdiction] is determined at the time the complaint is filed [and] was preserved when the entire action was transferred to Pennsylvania under [28 U.S.C.§1404(a) (1996), allowing transfer "for the convenience of parties and witnesses" to a district where the civil action might have been brought.]
Id. at *9 (text added).
Void Decision Cannot Receive Appellate Review, Even When De Novo SAP proposes first that this court need not be concerned with the question of personal jurisdiction over elcommerce in Pennsylvania, offering the theory that any transfer error is harmless because the dispositive issues on this appeal—claim construction and validity under §112—are questions of law that the Federal Circuit decides de novo. [...] A void decision cannot receive appellate review, even when review is by de novo determination. There must be jurisdiction in the district court to reach an appealable judgment.
Id. at *5-6 (text added).  
 
 
 Image Attribution Statement: U.S. Patent No. 6,947,903, Fig. 1E, edited by John Kirkpatrick (last modified March 25, 2014).
 
 
© 2000-2019, Journal of the Patent & Trademark Office Society
Disclaimer & Privacy Policy