Even if a structure corresponding to a means plus function claim is known in the prior art, it must still be disclosed in the patent’s specification in order to adequately claim the function.
The alleged infringer appealed the district court’s denial of its motion for judgment as a matter of law of non-infringement and the breadth of the district court’s injunction. The patents at issue share a common specification and cover systems and methods for electronic sourcing, enabling businesses and organizations to use computer networks to purchase goods. The alleged infringer sold modular software for supply chain management.
The alleged infringer argued that the specification did not disclose an accompanying structure for the claimed function of generating purchase orders. The patentee argued that it was not required to disclose a corresponding structure because implementing this functionality was already known in the prior art. The Federal Circuit disagreed with the patentee’s argument, holding that the court must consider a patent’s disclosure to determine what one of skill in the art would have understood the patent to claim. Although it may have been known in the prior art, the specification at issue did not disclose any structure for generating purchase orders, therefore this claim was indefinite.
The alleged infringer also argued that the patentee failed to present evidence that its software performed the data conversion step that occurs when a user cross references items between vendors. The Federal Circuit held that the patentee generally referred to the allegedly infringing system as if it had this functionality, but failed to present any evidence to prove that this element was actually present in the allegedly infringing software.
The alleged infringer also argued that the patentee failed to present sufficient evidence at trial to establish that the alleged infringer or its customers performed every step of the claim limitations at issue. The court held that the patentee presented enough circumstantial evidence from which a reasonable jury could infer that the alleged infringer performed the elements of the claims.
A copy of the opinion can be found here.