Knowledge Library Online purchasing system claims invalid for indefiniteness, lack of written description
IP Law
Thursday, March 12, 2015

Online purchasing system claims invalid for indefiniteness, lack of written description

Asserted claims of three patents for a system of purchasing goods or media content online through a retail point-of-purchase transaction have been found invalid by the federal district court in Salt Lake City for indefiniteness and lack of written description (Driessen v. Sony Music Entertainment, March 10, 2015, Waddoups, C.). Motions for summary judgment of invalidity by defendants Sony Music Entertainment, Best Buy, Target, and were granted.

Patents-in-suit. The primary patent at issue was U.S. Patent No. 7,003,500 (“the ’500 patent”), which described a system of purchasing downloadable media content or merchandise over the Internet through a retail point of sale transaction. Inventor James L. Driessen asserted that the defendants infringed the ’500 patent and two other patents, U.S. Patent No. 7,636,695 (“the ’695 patent”), and U.S. Patent No. 7,742,993 (“the ’993 patent”), which were filed as a continuation of and claiming priority to the date of the application that led to the issuance of the ’500 patent (“the ’272 application”).

The invention claimed by the ’500 patent allowed anonymity to be maintained when a purchaser later accessed the specific itemized media content for download using a password or code obtained during the retail transaction. A media content provider made content available at a particular URL, which was correlated to information about the content as a retail point of sale. The purchaser then could buy the content at the retail location. The purchaser received a physical object serving as proof of sale, such as a paper ticket or a smart card, which contained a password or code correlated to the content to be purchased. From the computer of his or her choice, the purchaser could then use the password or code to access the content and download it. Driessen contended that the use of a “specific internet item on a retail pre-paid card” was the novel and inventive step that distinguished the ’500 patent from prior art.

Indefiniteness. The defendants moved for summary judgment on the ground of indefiniteness, focusing on the means-plus-function claim limitation in claim 1 of the ’500 patent. The court’s analysis of this issue depended on its construction of the term “means for storing and retrieving a record on or in a physical medium,” and whether there was an associated structure for that element.

In order to meet the definiteness requirements of 35 U.S.C. §112, the claimed function and its supporting structure in the specification must be presented with sufficient particularity. In Nautilus v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2129 (2014), the U.S. Supreme Court explained that “sufficient particularity” exists if the “patent’s claims, viewed in the light of the specification and prosecution history, inform those skilled in the art of the scope of the invention with reasonable certainty.”

In an earlier proposed claim construction order, construing the term “means for storing and retrieving a record on or in a physical medium,” the court opined that the “function” of claim 1 was a “means for storing and retrieving a record.” After further review, the court decided that the initial construction was not practicable because it ignored the explicit language of the claim limitation by severing part of the function (“physical medium”) and treating it as the “structure.” This construction would improperly broaden the scope of the claimed function, the court said.

The court found that the function in the claim limitation was “storing and retrieving a record on or in a physical medium.” In this limitation, “storing” meant both putting into and holding in storage. “Retrieving” meant taking out of storage for the purpose of presenting authentication to prove purchase and obtain delivery of the merchandise or media content. “Record” meant a unique URL corresponding to specific merchandise or media content. “On or in a physical medium” described where the record was stored.

Turning to the corresponding structure, the court looked to the specification and prosecution history. The court reiterated that the “physical medium” in the claim limitation could not be the structure corresponding to the function of “storing and retrieving a record on or in a physical medium.” A figure that Driessen argued disclosed the structure—which pictured a physical ticket bearing a password or code that the purchaser could use to retrieve purchased goods—instead disclosed the “physical medium.” According to the court, the use of this figure served to illustrate the problem with the claim—that is, its lack of notice to the public of what they would be excluded from using based on the patent.

Driessen effectively purported to cover any and all means as long as they performed the recited functions. The patent, as it was written, would effectively create an infinite set of structures that could perform the recited function; therefore, it failed to provide the public notice required by Section 112. Accordingly, the court granted the defendants’ motion for summary judgment of invalidity based on indefiniteness. This finding invalidated claims 1-7 of the ’500 patent, the court said.

Written description. The defendants also moved for invalidity for lack of written description, based on three terms from claim 10: “payment message,” “selling message,” and “authorization message.” If the court found that the claim elements at issue lacked written description, that finding would invalidate a further six claims of the ’500 patent, all 27 claims of the ’695 patent, and all 41 claims of the ’993 patent.

According to the court, Driessen failed to demonstrate a genuine issue of material fact that the ’272 application disclosed the three terms at all. The application did not contain any written description of the three challenged terms in claim 10. The first time these terms were mentioned with respect to any of the patents-in-suit was in June 2005, when Driessen made a further amendment to his claims in the prosecution process. Accordingly, the defendants’ motion of summary judgment of invalidity based on written description was granted.

The case is No. 2:09-cv-0140-CW.

Attorneys: Stephen K. Christiansen (Stephen K Christiansen, Attorney at Law) for Marguerite A. Driessen. Eric W. Oh (Perkins Coie LLP) for Sony Music Entertainment and Best Buy Stores. Brent O. Hatch (Hatch James & Dodge) for Target Corp. and f.y.e.

Companies: Sony Music Entertainment; Best Buy Stores; Target Corp.; f.y.e.

MainStory: TopStory Patent TechnologyInternet UtahNews

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