Summary: CAFC rules on issues of personal jurisdiction, claim construction, and indefiniteness under 35. U.S.C. § 112.

Case: Elcommerce.com, Inc v. SAP AG, No. 11-1369 (Fed. Cir. Feb. 24, 2014) (precedential). On appeal from E.D. Pa. Before Newman, Plager, and Wallach.

Procedural Posture: Plaintiff Elcommerce appealed transfer from E.D. Tex to E.D. Pa., claim construction, and summary judgment of invalidity for indefiniteness. CAFC affirmed the claim construction but vacated the summary judgment of invalidity for the system claims.

  • Personal Jurisdiction: Elcommerce appealed the transfer on the grounds that it is the defendant to the declaratory judgment counterclaims that were filed in Texas and included in the transfer to Pennsylvania, and that it does not have minimum contacts with Pennsylvania. The CAFC stated that jurisdiction is determined at the time the complaint is filed and held that because there was jurisdiction over Elcommerce for the declaratory judgment counterclaims in Texas, jurisdiction was preserved when the entire action was transferred pursuant to 28 U.S.C. § 1404(a).
  • Claim Construction: The district court correctly construed the method claims, noting that Elcommerce had used the district court’s construction during reexamination proceedings to distinguish over the prior art.
  • Section 112 Issues (Indefiniteness): Defendant submitted no expert testimony or other evidence of the existing knowledge in the field in support of its argument that there was no corresponding structure disclosed for the means-plus-function limitations of the system claims. The district court erred in granting summary judgment of invalidity for indefiniteness without evidence on what a person of skill in the art would understand from the patent’s disclosure.

Wallach, dissenting-in-part:

  • Section 112 Issues (Indefiniteness): Defendant is not required to submit expert testimony or other evidence on a person of skill in the art’s interpretation of the disclosure where, as here, the means-plus-function claims are directed to a special-purpose computer and require a corresponding algorithm in the specification but no algorithm is disclosed. The district court’s holding of invalidity for indefiniteness should be affirmed.