Function Media, L.L.C. v. Google Inc., No. 2012-1020 (Fed. Cir. Feb. 13, 2013)

Function Media (“FM”) sued Google in the Eastern District of Texas on three patents relating to a computer-based invention for facilitating the automatic formatting of advertisements based on a publisher’s requirements, and for sending the advertisements for publication. On summary judgment, the district court found one of the patents invalid for indefiniteness because the specification failed to disclose sufficient structure for the independent claim’s means-plus-function term, “means for transmitting.” The asserted claims of the two remaining patents were found to be invalid and not infringed at trial.

On appeal, the Federal Circuit affirmed the district court’s finding of indefiniteness. The Court noted that while a claim may be recited in means-plus-function format, “the specification must contain sufficient descriptive text by which a person of skill in the field of the invention would ‘know and understand what structure corresponds to the means limitation.’” In the context of a special purpose computer-implemented invention, “[s]imply disclosing software … ‘without providing some detail about the means to accomplish the function[,] is not enough.’” Rather, the specification must disclose an algorithm for performing the function, expressed “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.”

The Court rejected FM’s argument that the specification adequately described the software for performing the claimed function, noting that “the specification discloses that the structure behind the function of transmitting is a computer program that transmits. Beyond the program’s function, however, no algorithm is disclosed.” The Court also rejected FM’s reliance on the disclosed types of connections over which a transmission could occur (such as telephone lines and data networks), noting that the issue is not whether the patent discloses a physical structure over which the software transmits. Rather, the issue is whether the patent discloses the algorithm by which the software performs the transmission function. Finally, the Court rejected FM’s argument that sufficient structure was disclosed for one of skill in the art to provide a program for performing the claimed function: “[a] patentee cannot avoid providing specificity as to structure simply because someone of ordinary skill in the art would be able to devise a means to perform the claimed function. To allow that form of claiming under section 112, paragraph 6, would allow the patentee to claim all possible means of achieving a function.”