Summary Judgment Order, Fortinet, Inc. v. Sophos, Inc., et al., Case No. 13-cv-05831-EMC (Judge Edward Chen)

Means-plus-function claim elements are less common than in the past, due to stricter rules about their scope and requirements for validity. But when they do arise, it is still necessary to know how to deal with them. Judge Chen recently entertained cross-motions for summary judgment on whether a means-plus-function element is indefinite if the specification discloses using a computer but no algorithm. And while Judge Chen ultimately found he could not render summary judgment for either side, his order offers a primer on approaching software-related “means” elements.

Fortinet asked Judge Chen to invalidate claim 9 of Sophos’s U.S. Patent No. 6,195,587, asserted in a counterclaim, on grounds that the claim element “means in a first data processor of the network for providing a second data processor of the network with a copy of an item” is indefinite. A means-plus-function claim is indefinite if there is no corresponding structure described in the specification. Here, Sophos argued the corresponding structure is a workstation—basically, a computer. Judge Chen thus surveyed two threads of cases relating to computer-implemented inventions:

First, Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328 (Fed. Cir. 2008), required that the disclosed structure must be more than a general purpose computer or microprocessor; instead, the structure is “not the general purpose computer, but rather the special purpose computer programmed to perform the disclosed algorithm.” Thus, a claim may be indefinite if there is no disclosed algorithm.

Second, carving out what Judge Chen called an “exception to the Aristocrat rule,” Katz Interactive Call Processing Patent Litigation v. American Airlines, Inc., 639 F.3d 1303 (Fed. Cir. 2011), held that when a function can be achieved by any general purpose computer without special programming, then no algorithm need be disclosed. Katz was remanded for the district court to construe the terms “processing,” “receiving,” and “storing” and to determine based on its construction whether those functions could be performed by a general purpose processor.

As later noted in EON Corp. IP Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616 (Fed. Cir. 2015), the exception inKatz is “rare” and further clarified two things: (1) “special programming” has nothing to do with how complex or simple the function is to implement but rather “includes any functionality that is not ‘coextensive’ with a microprocessor or general purpose computer,” and (2) whether an algorithm is required or not does not depend on the POSITA, who comes in only if “the specification discloses an algorithm that the accused infringer contends is inadequate.”

Turning to the case before him, Judge Chen denied Fortinet’s motion for summary judgment of invalidity because Fortinet did not present any evidence, expert or otherwise, that the claimed function (providing a copy from one processor to another) required special programming. Judge Chen found the lack of evidence “especially troubling” because Katz suggested that copying and sending might be functions that can be accomplished by a general purpose computer.

In opposition to Fortinet’s motion, Sophos asked that the Court sua sponte grant summary judgment in Sophos’s favor. Judge Chen declined to go so far, declining to conclude on summary judgment that the claimed functions could in fact be performed by a general purpose computer. Sophos also argued that expert testimony establishes a POSITA would find corresponding structure. But, referring back to EON, Judge Chen stated that expert testimony can only “fill in the blanks” when there is a partially disclosed algorithm. Judge Chen disagreed with Sophos that there was a partially disclosed algorithm here, saying he found persuasive the PTAB’s finding in an IPR proceeding cited by Fortinet that Sophos’s patent’s specification, though disclosing “communication means” and “file server”, had no corresponding structure.

While leaving the decision regarding indefiniteness of Sophos’s means-plus-function claim for another day, Judge Chen ruled in Fortinet’s favor on several other issues: that Sophos could not recover pre-suit damages due to failure to mark; that Sophos infringes one of Fortinet’s patents because it did not rebut the testimony of Fortinet’s expert on infringement (setting aside the issue of whether that patent is invalid); and that three of Sophos’s patents are dismissed from the case after Sophos granted Fortinet a covenant not to sue in response to Fortinet’s invalidity motion.