Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 1 of 10 PageID #: 21896
`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 1 of 10 PagelD #: 21896
`
`EXHIBIT A
`EXHIBIT A
`
`

`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 2 of 10 PageID #: 21897
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
`
`2017 WL 4872706
`Only the Westlaw citation is currently available.
`United States Court of Appeals,
`Federal Circuit.
`
`MASTERMINE SOFTWARE,
`INC., Plaintiff-Appellant
`v.
`MICROSOFT CORPORATION, Defendant-Appellee
`
`2016-2465
`|
`Decided: October 30, 2017
`
`Synopsis
`Background: Owner of patents disclosing methods and
`systems that allowed a user to easily mine and report
`data maintained by a customer relationship management
`(CRM) application brought infringement action. The
`United States District Court for the District of Minnesota,
`No. 0:13-cv-00971-PJS-TNL, Patrick J. Schiltz, J., 2016
`WL 8292205, entered claim construction order, and
`parties stipulated to final judgments of noninfringement
`and invalidity for indefiniteness. Patent owner appealed.
`
`Holdings: The Court of Appeals, Stoll, Circuit Judge, held
`that:
`
`[1] term “pivot table” meant an interactive set of data
`displayed in rows and columns that can be rotated and
`filtered to summarize or view the data in different ways,
`and
`
`[2] claims were not invalid as indefinite.
`
`Affirmed in part, reversed in part, and remanded.
`
`West Headnotes (12)
`
`[1]
`
`Patents
`Construction and Operation of Patents
`The ultimate construction of the claim is a
`legal question and, therefore, is reviewed de
`novo.
`
`[2]
`
`[3]
`
`[4]
`
`[5]
`
`Cases that cite this headnote
`
`Patents
`Construction and Operation of Patents
`The Court of Appeals reviews a district court's
`claim construction based solely on intrinsic
`evidence de novo, while it reviews subsidiary
`factual findings regarding extrinsic evidence
`for clear error.
`
`Cases that cite this headnote
`
`Patents
`Plain, ordinary, or customary meaning in
`general
`Patents
`State of the art
`Claim construction seeks to ascribe the
`ordinary and customary meaning to claim
`terms as a person of ordinary skill in the art
`would have understood them at the time of
`invention.
`
`Cases that cite this headnote
`
`Patents
`Language of claims in general
`For claim construction purposes, the claims
`themselves provide substantial guidance as to
`the meaning of particular claim terms.
`
`Cases that cite this headnote
`
`Patents
`Specifications and Drawings; Written
`Description
`Patents
`State of the art
`For claim construction purposes, the person
`of ordinary skill in the art is deemed to read
`the claim term not only in the context of the
`particular claim in which the disputed term
`appears, but in the context of the entire patent,
`including the specification.
`
`Cases that cite this headnote
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`1
`
`

`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 3 of 10 PageID #: 21898
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
`
`Patents
`Specifications and Drawings; Written
`Description
`Patents
`Preferred embodiment
`For claim construction purposes, while the
`Court of Appeals reads claims in view of the
`specification, of which they are a part, it does
`not read limitations from the embodiments in
`the specification into the claims.
`
`Cases that cite this headnote
`
`Patents
`Data processing
`Term “pivot table” in patents disclosing
`methods and systems that allowed a user to
`easily mine and report data maintained by
`a customer relationship management (CRM)
`application, meant an interactive set of data
`displayed in rows and columns that can be
`rotated and filtered to summarize or view the
`data in different ways.
`
`Cases that cite this headnote
`
`Patents
`Patentability and Validity
`Indefiniteness is a question of law that the
`Court of Appeals reviews de novo, subject to
`a determination of underlying facts.
`
`[11]
`
`Functions, means, and results of
`invention
`Functional language in a means-plus-function
`format is explicitly authorized by statute, and
`functional language may also be employed to
`limit the claims without using the means-plus-
`function format. 35 U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`Patents
`Particular products or processes
`Claims disclosing a system comprising
`a reporting module
`installed within the
`customer relationship management (CRM)
`software application, in patents disclosing
`methods and systems that allowed a user
`to easily mine and report data maintained
`by a CRM application, were not invalid as
`indefinite; claims used permissible functional
`language to describe capabilities of the
`claimed system, and claims informed those
`skilled
`in the art about the scope of
`the invention with reasonable certainty. 35
`U.S.C.A. § 112.
`
`Cases that cite this headnote
`
`[12]
`
`Patents
`In general; utility
`US Patent 7,945,850, US Patent 8,429,518.
`Construed.
`
`Cases that cite this headnote
`
`Cases that cite this headnote
`
`[6]
`
`[7]
`
`[8]
`
`[9]
`
`Patents
`Ambiguity, Uncertainty, or
`Indefiniteness
`While a claim directed to both a method and
`an apparatus may be indefinite, apparatus
`claims are not necessarily indefinite for using
`functional language.
`
`Cases that cite this headnote
`
`[10]
`
`Patents
`
`Appeal from the United States District Court for the
`District of Minnesota in No. 0:13-cv-00971-PJS-TNL,
`Judge Patrick J. Schiltz.
`
`Attorneys and Law Firms
`
`ADAM ROGER STEINERT, Fredrikson & Byron,
`PA, Minneapolis, MN, argued for plaintiff-appellant.
`Also represented by KURT JOHN NIEDERLUECKE,
`NIKOLA DATZOV, GRANT DAVID FAIRBAIRN,
`LORA MITCHELL FRIEDEMANN.
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`2
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`

`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 4 of 10 PageID #: 21899
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
`
`ERICA D. WILSON, Walters Wilson LLP, Redwood
`City, CA, argued for defendant-appellee. Also represented
`by ERIC STEPHEN WALTERS.
`
`Before Newman, O'Malley, and Stoll, Circuit Judges.
`
`Opinion
`
`Stoll, Circuit Judge.
`
`*1 MasterMine Software, Inc. appeals from a stipulated
`judgment of noninfringement and invalidity following
`adverse claim construction and indefiniteness rulings
`from the United States District Court for the District
`of Minnesota. Because the district court's construction
`is supported by the intrinsic evidence, and the claims
`do not improperly claim both an apparatus and a
`method of using the apparatus, we affirm the court's
`claim construction, reverse the court's indefiniteness
`determination, and remand for proceedings consistent
`with this opinion.
`
`BACKGROUND
`
`for
`sued Microsoft Corporation
`MasterMine
`infringement of its two related patents, U.S. Patent Nos.
`7,945,850 and 8,429,518. MasterMine asserted claims 1, 8,
`10, and 12 of the '850 patent and claims 1, 2, and 3 of the
`'518 patent.
`
`Both patents disclose methods and systems “that allow[ ]
`a user to easily mine and report data maintained by a
`customer relationship management (CRM) application.”
`'850 patent, Abstract. 1 CRM applications “are used to
`manage all aspects of customer relations by integrating
`a company's sales force, processes, sales channels and
`customers into one environment.” Id. at col. 1 ll. 11–14.
`
`The patents describe a process by which an electronic
`worksheet is automatically created. Within this electronic
`worksheet, a multi-dimensional analysis table, known as
`a pivot table, “allows the user to quickly and easily
`summarize[ ] or view large amounts of CRM data.” Id. at
`col. 2 ll. 22–24. “For example, the user can rotate the rows
`and columns of [a pivot table] to see different summaries
`of the CRM data, filter the data by displaying different
`pages, or display the details for [an] area of interest.” Id.
`at col. 2 ll. 24–27. The patents further describe that a user
`
`is able to “analyze the captured CRM data and ‘mine’ the
`data for important insights” upon generation of the pivot
`table. Id. at col. 3 ll. 5–6.
`
`Following briefing and argument, the district court
`entered a claim construction order, construing, inter alia,
`the term “pivot table.” MasterMine Software, Inc. v.
`Microsoft Corp., No. 13-CV-0971, 2016 WL 8292205,
`at *2 (D. Minn. May 6, 2016) (“Claim Construction
`Order”). The district court construed “pivot table,” the
`term MasterMine now contests on appeal, to mean “an
`interactive set of data displayed in rows and columns that
`can be rotated and filtered to summarize or view the data
`in different ways.” Id.
`
`Claim 1 of the '850 patent is illustrative and reproduced
`below in pertinent part:
`
`1. A method comprising:
`
`executing a customer relationship management (CRM)
`software application on a computer, wherein the CRM
`software application includes customized settings and
`local field names, and further wherein the CRM
`software application includes a CRM database that
`stores CRM data;
`
`*2 ....
`
`invoking a spreadsheet application from the reporting
`module installed within the CRM software application
`using an application programming interface (API) of
`the spreadsheet application to automatically generate
`an electronic worksheet viewable by the spreadsheet
`software application, wherein
`the automatically
`generating the electronic worksheet comprises directing
`the spreadsheet application with the reporting module
`installed within the CRM software application to create
`a new workbook having the electronic worksheet;
`
`further invoking the spreadsheet application from
`the reporting module installed within the CRM
`software application using the API to automatically
`generate a pivot table within the electronic worksheet
`according to the database query, wherein the pivot table
`contains the CRM data from the CRM database, and
`wherein invoking the spreadsheet application includes
`communicating report parameters from the reporting
`module installed within the CRM software application
`to the spreadsheet software application based on the
`schema and data structures of the CRM database and
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 5 of 10 PageID #: 21900
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
`
`the customized settings including the local field names
`within the CRM software application;
`
`presenting the pivot table to a user with the spreadsheet
`application in accordance with the report parameters
`received from the reporting module installed within the
`CRM software application;
`
`....
`
`Id. at col. 7 l. 65 – col. 8 l. 67 (emphasis added).
`
`Microsoft additionally sought a declaration that claims
`8 and 10 of the '850 patent and claims 1, 2, and 3 of
`the '518 patent are invalid for indefiniteness, which the
`district court addressed in its claim construction order.
`Claim Construction Order, 2016 WL 8292205, at *6–9.
`The district court agreed with Microsoft, holding the
`claims indefinite for improperly claiming two different
`subject-matter classes. Id. at *9. Following the district
`court's construction of “pivot table,” the parties stipulated
`to final judgments of noninfringement and invalidity
`for indefiniteness, with MasterMine reserving the right
`to appeal the district court's claim construction order.
`Pursuant to the stipulation, the district court entered
`final judgment, and MasterMine now appeals. We have
`jurisdiction under 28 U.S.C. § 1295(a)(1).
`
`DISCUSSION
`
`MasterMine challenges both the district court's claim
`construction and its indefiniteness determination. We
`address these issues in turn.
`
`I.
`
`[2] “The ultimate construction of the claim is a
`[1]
`
`legal question and, therefore, is reviewed de novo.” Info-
`Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262,
`1265 (Fed. Cir. 2015). We review a district court's claim
`construction based solely on intrinsic evidence de novo,
`while we review subsidiary factual findings regarding
`extrinsic evidence for clear error. Teva Pharm. USA, Inc.
`v. Sandoz, Inc., ––– U.S. ––––, 135 S.Ct. 831, 841, –––
`L.Ed.2d –––– (2015).
`
`as a person of ordinary skill in the art would have
`understood them at the time of invention. Phillips v. AWH
`Corp., 415 F.3d 1303, 1312–14 (Fed. Cir. 2005) (en banc)
`(citing Vitronics Corp. v. Conceptronic, Inc., 90 F.3d 1576,
`1582 (Fed. Cir. 1996)). “[T]he claims themselves provide
`substantial guidance as to the meaning of particular claim
`terms.” Id. at 1314. In addition, “the person of ordinary
`skill in the art is deemed to read the claim term not only in
`the context of the particular claim in which the disputed
`term appears, but in the context of the entire patent,
`including the specification.” Id. at 1313. But “[w]hile we
`read claims in view of the specification, of which they are
`a part, we do not read limitations from the embodiments
`in the specification into the claims.” Hill-Rom Servs., Inc.
`v. Stryker Corp., 755 F.3d 1367, 1371 (Fed. Cir. 2014).
`
`[7] MasterMine argues that the district court
`*3
`improperly construed the term “pivot table,” which it
`proposes should be construed as a “computer software
`object [or structure] defining an interactive table that can
`show the same data from a list or a database in more
`than one arrangement.” Appellant Br. 19 (alteration in
`original) (quoting J.A. 1338). In other words, MasterMine
`contends that the district court's construction is incorrect
`because it excludes tables that do not display data.
`According to MasterMine, its proposed construction is
`consistent with the patents' specification and “fits easily
`when read into the claims.” Id. We disagree.
`
`First, the claim language supports the district court's
`construction. Each time the claims recite the generation
`of a pivot table, they further recite within the same
`limitation that the generated pivot table contains data or
`presents data. For example, claim 1 of the '850 patent
`recites “automatically generat[ing] a pivot table within
`the electronic worksheet according to the database query,
`wherein the pivot table contains the CRM data from the
`CRM database.” '850 patent col. 8 ll. 44–47; see also id. at
`col. 12 ll. 5–7 (“[W]herein the pivot table contains CRM
`data from the CRM database and presents the CRM
`data in accordance with the report parameters.”) (claim
`12). Additionally, claim 8 of the '850 patent requires “the
`spreadsheet software application generat[ing] the pivot
`table within the electronic worksheet to present the CRM
`data in accordance with the report parameters.” Id. at col.
`10 ll. 22–25; see also '518 patent col. 8 ll. 51–52 (claim 1).
`
`The patents' identical specification further supports the
`[6] Claim construction seeks to ascribe
`[5]
`[4]
`[3]
`
`
`
`district court's construction. For example, the abstract
`the “ordinary and customary meaning” to claim terms
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 6 of 10 PageID #: 21901
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
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`explains the purpose of a pivot table: “[T]he report
`is automatically generated to include a pivot table for
`displaying the data.” '850 patent, Abstract (emphasis
`added). The specification further explains that multi-
`dimensional analysis table 14, which “represents an
`analytical function, commonly referred to as a pivot
`table ... allows the user to quickly and easily summarize[ ]
`or view large amounts of CRM data.” Id. at col. 2 ll.
`19–24 (emphasis added). The specification adds that,
`“[a]fter table 14 is generated, the user can interact with
`spreadsheet application 6 to manipulate table 14 in order
`to analyze the captured CRM data and ‘mine’ the data
`for important insights.” Id. at col. 3 ll. 3–10. Thus, the
`specification explains that the purpose of pivot tables
`in the context of the invention is to display data that
`can be viewed, summarized, and manipulated by users,
`and such user action is available upon the generation of
`the pivot tables. This understanding comports with the
`district court's construction—tables containing data “that
`can be rotated and filtered to summarize or view the data
`in different ways.” Claim Construction Order, 2016 WL
`8292205, at *2.
`
`Finally, the prosecution history of the patents provides
`additional support for the district court's construction.
`During prosecution of a related parent patent, 2 the
`applicant, in an attempt to overcome prior art rejections,
`distinguished a prior art reference, referred to as Conlon,
`and emphasized that a pivot table is created when filled
`with data:
`
`Conlon describes a user interface
`for a spreadsheet application that
`allows a user to drag and drop
`fields to manually create a pivot
`table on a spreadsheet. Conlon
`requires that the user interacts with
`the spreadsheet application directly,
`and that the user manually selects
`each of the fields.
`
`J.A. 1500. We agree with the district court, which found
`that this statement demonstrates a “represent[ation] to
`the PTO that a pivot table is ‘create[d]’ when the user
`selects fields by dragging and dropping them into the
`spreadsheet—i.e., when the user populates the table.”
`Claim Construction Order, 2016 WL 8292205, at *3.
`We further agree with the district court, however, that
`this statement is not “so clear as to show reasonable
`clarity and deliberateness, and so unmistakable as to
`
`be unambiguous evidence of disclaimer.” Id. (quoting
`Dealertrack, Inc. v. Huber, 674 F.3d 1315, 1322 (Fed.
`Cir. 2012)). Nevertheless, this explanation presented by
`the inventor during patent examination is relevant to
`claim construction, “for the role of claim construction
`is to ‘capture the scope of the actual invention’ that is
`disclosed, described, and patented.” Fenner Invs., Ltd.
`v. Cellco P'ship, 778 F.3d 1320, 1323 (Fed. Cir. 2015)
`(quoting Retractable Techs., Inc. v. Becton, Dickinson
`& Co., 653 F.3d 1296, 1305 (Fed. Cir. 2011)). Thus,
`while this statement does not amount to disclaimer, it
`does, at a minimum, further support the district court's
`construction.
`
`*4 MasterMine's arguments in support of its contrary
`claim construction are not compelling. MasterMine
`first argues that the specification contains excerpts of
`computer code that would generate a pivot table with
`an empty data display area. See '850 patent col. 5 ll. 1–
`39. This code, however, does not support MasterMine's
`construction on its face. As both parties conceded at
`the claim construction hearing, the code provided in
`the specification is not operable on its own. Indeed,
`MasterMine emphasized that it “never suggested that this
`code is a standalone application; it isn't. This code is part
`of an application.” J.A. 2151. Accordingly, it is unclear
`what exactly would be created once this sample code was
`included within the entirety of code sufficient to execute
`the application. Neither party presented expert testimony
`on this point.
`
`its proposed
`MasterMine additionally argues that
`construction properly accounts for the claims' recitation
`of additional steps that occur after a pivot table is
`generated. These steps include “presenting the pivot
`table to a user,” '850 patent col. 8 l. 55 (claim 1),
`and “format[ting] the pivot table,” id. at col. 9 ll. 11–
`12 (claim 3). MasterMine contends that the district
`court's construction renders these additional limitations
`superfluous, as presentation to the user and formatting
`would be simultaneous implications of a table that must
`display data upon generation. We disagree. MasterMine's
`position finds no support in the specification. Though the
`district court's construction requires that a pivot table be
`populated with data upon its generation, such population
`does not prevent the table from being subsequently
`presented to the user or formatted. These additional
`steps could be independent of the table's population of
`data—e.g., the table could be displayed to the user and
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
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`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 7 of 10 PageID #: 21902
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
`
`formatted after it is created. Accordingly, the district
`court's construction does not render them superfluous.
`
`language, specification, and
`light of the claim
`In
`prosecution history, we conclude that the district court
`properly construed “pivot table” to mean “an interactive
`set of data displayed in rows and columns that can be
`rotated and filtered to summarize or view the data in
`different ways.”
`
`a claim directed to both a method and an apparatus
`may be indefinite, “apparatus claims are not necessarily
`indefinite for using functional language.” Microprocessor
`Enhancement Corp. v. Tex. Instruments Inc. (MEC), 520
`F.3d 1367, 1375 (Fed. Cir. 2008). “Indeed, functional
`language in a means-plus-function format is explicitly
`authorized by statute,” and “[f]unctional language may
`also be employed to limit the claims without using the
`means-plus-function format.” Id.
`
`II.
`
`[8] MasterMine also challenges the district court's
`determination that claims 8 and 10 of the '850 patent
`and claims 1, 2, and 3 of the '518 patent are invalid
`for indefiniteness. Pursuant to 35 U.S.C. § 112, ¶
`2, a patent specification must “conclude with one or
`more claims particularly pointing out and distinctly
`claiming the subject matter which the applicant regards
`as his invention.” 3 The Supreme Court has held this
`definiteness provision “to require that a patent's claims,
`viewed in light of the specification and prosecution
`history, inform those skilled in the art about the scope of
`the invention with reasonable certainty.” Nautilus, Inc. v.
`Biosig Instruments, Inc., ––– U.S. ––––, 134 S.Ct. 2120,
`2129, 189 L.Ed.2d 37 (2014). “Indefiniteness is a question
`of law that we review de novo, subject to a determination
`of underlying facts.” Akzo Nobel Coatings, Inc. v. Dow
`Chem. Co., 811 F.3d 1334, 1343 (Fed. Cir. 2016) (internal
`citation omitted).
`
`In IPXL Holdings, L.L.C. v. Amazon.com, Inc., a case of
`first impression, we held that a single claim covering both
`an apparatus and a method of use of that apparatus is
`indefinite under section 112, paragraph 2. 430 F.3d 1377
`(Fed. Cir. 2005). The concern underlying our holding in
`IPXL Holdings was that claiming both an apparatus and
`method of using the apparatus within a single claim can
`make it “unclear whether infringement ... occurs when one
`creates a[n infringing] system, or whether infringement
`occurs when the user actually uses [the system in an
`infringing manner].” UltimatePointer, L.L.C. v. Nintendo
`Co., 816 F.3d 816, 826 (Fed. Cir. 2016) (alteration in
`original) (quoting IPXL Holdings, 430 F.3d at 1384).
`
` [10] Following IPXL Holdings, we have been
`*5 [9]
`called on to review applications of this holding to
`numerous different claims. As we have explained, while
`
`[11] Here, the district court determined that claims 8
`and 10 of the '850 patent and claims 1, 2, and 3 of the
`'518 patent are invalid for indefiniteness for introducing
`method elements into system claims. We disagree. In our
`view, these claims are simply apparatus claims with proper
`functional language.
`
`A review of our case law addressing this issue is instructive.
`For example, at issue in IPXL Holdings was the following
`dependent claim 25:
`
`The system of claim 2 [including an
`input means] wherein the predicted
`transaction information comprises
`both a
`transaction
`type and
`transaction parameters associated
`with that transaction type, and the
`user uses the input means to either
`change the predicted transaction
`information or accept the displayed
`transaction type and transaction
`parameters.
`
`430 F.3d at 1384 (alteration in original). We held that
`this claim recites both the system of claim 2 and a
`method for using that system because it is unclear
`whether infringement of claim 25 occurs “when one
`creates a system that allows the user to change the
`predicted transaction information or accept the displayed
`transaction, or whether infringement occurs when the
`user actually uses the input means to change transaction
`information or uses the input means to accept a displayed
`transaction.” Id. Thus, we concluded that, “[b]ecause
`claim 25 recites both a system and the method for using
`that system, it does not apprise a person of ordinary skill
`in the art of its scope, and it is invalid under section 112,
`paragraph 2.” Id.
`
`In In re Katz Interactive Call Processing Patent Litigation,
`the claims at issue covered a “system with an ‘interface
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
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`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 8 of 10 PageID #: 21903
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
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`means for providing automated voice messages ... to
`certain of said individual callers, wherein said certain of
`said individual callers digitally enter data.’ ” 639 F.3d 1303,
`1318 (Fed. Cir. 2011) (emphasis added). While Katz tried
`to distinguish IPXL Holdings on the ground that the term
`“wherein” does not signify a method step but instead
`defines a functional capability, we disagreed, holding
`Katz's claims indefinite as they “create confusion as to
`when direct infringement occurs because they are directed
`both to systems and to actions performed by ‘individual
`callers.’ ” Id.
`
`We also applied this doctrine in Rembrandt Data Techs.,
`LP v. AOL, LLC, where, unlike the claims in IPXL
`Holdings and Katz, the claims at issue did not claim
`user action. 641 F.3d 1331 (Fed. Cir. 2011). At issue in
`Rembrandt was the following independent claim 3:
`
`3. A data transmitting device for transmitting
`signals corresponding to an incoming stream of bits,
`comprising:
`
`first buffer means for partitioning said stream into
`frames of unequal number of bits and for separating the
`bits of each frame into a first group and a second group
`of bits;
`
`fractional encoding means for receiving the first group
`of bits of each frame and performing fractional
`encoding to generate a group of fractionally encoded
`bits;
`
`*6 second buffer means for combining said second
`group of bits with said group of fractionally encoded
`bits to form frames of equal number of bits; trellis
`encoding means for trellis encoding the frames from
`said second buffer means; and
`
`transmitting the trellis encoded frames.
`
`Id. at 1339 (emphasis added). We held this claim
`invalid for indefiniteness. We explained that “[t]he first
`four elements of claim 3 of the '236 patent recite
`apparatus elements: buffer means, fractional encoding
`means, second buffer means, and trellis encoding means,”
`whereas “[t]he final element is a method: ‘transmitting the
`trellis encoded frames.’ ” Id.
`
`Conversely, in HTC Corp. v. IPCom GmbH & Co., KG,
`we held apparatus claims not invalid for indefiniteness
`despite their use of functional language. 667 F.3d 1270
`
`(Fed. Cir. 2012). At issue in HTC was, inter alia, the
`following independent claim 1:
`
`A mobile station for use with a network including a first
`base station and a second base station that achieves a
`handover from the first base station to the second base
`station by:
`
`storing link data for a link in a first base station,
`
`holding in reserve for the link resources of the first base
`station, and
`
`when the link is to be handed over to the second base
`station:
`
`initially maintaining a storage of the link data in the first
`base station,
`
`initially causing the resources of the first base station to
`remain held in reserve, and
`
`at a later timepoint determined by a fixed period of time
`predefined at a beginning of the handover, deleting the
`link data from the first base station and freeing up the
`resources of the first base station, the mobile station
`comprising:
`
`an arrangement for reactivating the link with the first
`base station if the handover is unsuccessful.
`
`Id. at 1273 (first six emphases added). We held that,
`unlike the IPXL Holdings claim, this claim does not
`“recite a mobile station and then have the mobile
`station perform the six enumerated functions,” but rather,
`this claim “merely establish[es] those functions as the
`underlying network environment in which the mobile
`station operates.” Id. at 1277. Accordingly, we held
`that the “unconventional format” of this claim did not
`preclude it from being definite because it makes clear “that
`infringement occurs when one makes, uses, offers to sell,
`or sells the claimed apparatus: the mobile station—which
`must be used in a particular network environment.” Id.
`
`Similarly, at issue in MEC was the following independent
`claim 7:
`
`7. A pipelined processor for executing instructions
`comprising:
`
`a conditional execution decision logic pipeline stage ...;
`
`....
`
` © 2017 Thomson Reuters. No claim to original U.S. Government Works.
`
`7
`
`

`

`Case 1:16-cv-00455-RGA Document 311-1 Filed 11/08/17 Page 9 of 10 PageID #: 21904
`MasterMine Software, Inc. v. Microsoft Corporation, --- F.3d ---- (2017)
`2017 WL 4872706
`
`the conditional execution decision logic pipeline stage
`performing a boolean algebraic evaluation of the
`condition code and said conditional execution specifier
`and producing an enable-write with at least two states,
`true and false;
`
`said enable-write when true enabling and when false
`disabling the writing of instruction results at said write
`pipeline stage;
`
`wherein the reporting module installed within the CRM
`software application presents a set of user-selectable
`database fields as a function of the selected report
`template, receives from the user a selection of one
`or more of the user-selectable database fields, and
`generates a database query as a function of the user
`selected database fields;
`
`....
`
`....
`
`'850 patent col. 9 ll. 39–67 (emphases added).
`
`logic pipeline
`the conditional execution decision
`stage, when specified by the conditional execution
`specifier, determining the enable-write using the boolean
`algebraic evaluation;
`
`....
`
`520 F.3d at 1371–72 (emphases added). We concluded
`that this claim “is clearly limited to a pipelined processor
`possessing the recited structure and capable of performing
`the recited functions, and is thus not indefinite under
`IPXL Holdings.” Id. at 1375.
`
`*7 Most recently, in UltimatePointer, the claims at issue
`claimed “ ‘a handheld device including: an image sensor,
`said image sensor generating data’ and other similar
`‘generating data’ limitations.” UltimatePointer, 816 F.3d
`at 826 (quoting UltimatePointer, LLC v. Nintendo Co.,
`73 F.Supp.3d 1305, 1308 (W.D. Wash. 2014)). We held
`that these claims were unlike those in IPXL Holdings and
`Katz because they “make clear that the ‘generating data’
`limitation reflects the capability of that structure rather
`than the activities of the user,” and “do not reflect an
`attempt to claim both an apparatus and a method, but
`instead claim an apparatus with particular capabilities.”
`Id. at 827–28.
`
`The claims at issue here are similar to those in MEC, HTC,
`and UltimatePointer. The district court focused, inter alia,
`on claim 8 of the '850 patent, which discloses in pertinent
`part, “[a] system comprising”:
`
`....
`
`a reporting module installed within the CRM software
`application ...;
`
`....
`
`includes active verbs—presents,
`Though claim 8
`receives, and generates—these verbs represent permissible
`functional language used to describe capabilities of the
`“reporting module.” Like the claims in MEC, HTC, and
`UltimatePointer, the claims at issue here merely claim
`that the system “possess[es] the recited structure [which is]
`capable of performing the recited functions.” MEC, 520
`F.3d at 1375.
`
`These claims are also distinguishable from those at issue in
`IPXL Holdings and Katz, as the claims here do not claim
`activities performed by the user. While these claims make
`reference to user selection, they do not explicitly claim
`the user's act of selection, but rather, claim the system's
`capability to receive and respond to user selection. The
`limitations at issue here (“receiv [ing] from the user
`a selection” and “generat[ing] a database query as a
`function of the user selected database fields”) focus on
`the capabilities of the system, whereas the claims in IPXL
`Holdings (“the user uses the input means”) and Katz
`(“said individual callers digitally enter data”) focus on
`specific actions performed by the user. Moreover, unlike
`the claims in Rembrandt, the functional language here
`does not appear in isolation, but rather, is specifically
`tied to structure: the reporting module installed within the
`CRM software application.
`
`As noted above, this Court in IPXL Holdings was
`concerned that claiming both an apparatus and a method
`of using the apparatus within a single claim can make it
`“unclear whether infringement