IP Law Daily Claims of patents directed to automatic spreadsheet creation were not indefinite
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Monday, October 30, 2017

Claims of patents directed to automatic spreadsheet creation were not indefinite

By Cheryl Beise, J.D.

The federal district court in Minneapolis properly construed a key term in the claims of two related patents directed to automatic spreadsheet creation asserted against Microsoft, but the court erred in concluding that the claims were invalid for indefiniteness, the U.S. Court of Appeals for the Federal Circuit has held. The claims did not introduce method elements into system claims, as the district court found, but merely used permissible functional language to describe the capabilities of the claimed system (MasterMine Software, Inc. v. Microsoft Corp., October 30, 2017, Stoll, K.).

MasterMine Software, Inc. sued Microsoft Corp. for infringement of U.S. Patent Nos. 7,945,850 (the ’850 patent) and 8,429,518 (the ’518 patent). The patents share the same specification and relate to methods and systems for allowing "a user to easily mine and report data maintained by a customer relationship management (CRM) application." The patents describe a process for automatic creation of an electronic worksheet. Following adverse claim construction and indefiniteness rulings, the federal district court in Minneapolis entered stipulated judgment of noninfringement and invalidity.

On appeal MasterMine challenged the district court’s construction of the claim term "pivot table," and its finding that claims 8 and 10 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent were invalid for indefiniteness under 32 U.S.C. § 112, ¶ 2 (pre-AIA).

Claim construction. The district court construed "pivot table" to mean "an interactive set of data displayed in rows and columns that can be rotated and filtered to summarize or view the data in different ways." MasterMine argued that the district court’s construction was erroneous because it excluded tables that do not display data.

The Federal Circuit disagreed. The district court’s construction was supported by the claim language, the specification, and the prosecution history. Each time a claim recites the generation of a pivot table, it also recites within the same limitation that the generated pivot table contains data or presents data, the court noted. In addition, the patents’ specification explains that the purpose of pivot tables is to display data that can be viewed, summarized, and manipulated by users and the abstract added that "a report is automatically generated to include a pivot table for displaying the data." Finally, in an attempt to overcome prior art rejections of a related parent patent, the applicant distinguished a prior art reference by emphasizing that the invention claimed a pivot table that is automatically populated when a user selects a spreadsheet field.

Indefiniteness. The district court held that claims 8 and 10 of the ’850 patent and claims 1, 2, and 3 of the ’518 patent were invalid for indefiniteness because they introduced method elements into system claims. The Federal Circuit disagreed, finding instead that these claims "are simply apparatus claims with proper functional language."

The Federal Circuit reviewed its case law addressing indefiniteness in the context of claims that contain functional language. In some cases, the court found indefiniteness where a single claim reciting an apparatus and a method of using the apparatus made it unclear when infringement occurs. The claims at issue in this case, however, did not pose this problem because they do not claim activities performed by the user, but focus on the ability of the system to receive and respond to user selection. Moreover, the functional language is specifically tied to structure: the reporting module installed within the CRM software application. Thus, the claims merely use permissible functional language to describe the capabilities of the claimed system, making it clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system, the court explained.

Concluding that the claims inform those skilled in the art about the scope of the invention with reasonable certainty, the court reversed the district court’s indefiniteness determination, and remanded the case for further proceedings.

The case is No. 2016-2465.

Attorneys: Adam Roger Steinert (Fredrikson & Byron, PA) for MasterMine Software, Inc. Erica D. Wilson (Walters Wilson LLP) for Microsoft Corp.

Companies: Mastermine Software, Inc.; Microsoft Corp.

MainStory: TopStory Patent TechnologyInternet FedCirNews

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