User Activities vs. User-Driven, Hardware Function
Every so often a decision comes out of the Federal Circuit that has immediate value for patent prosecutors. Yesterday’s decision in Mastermine Software, Inc. v. Microsoft Corp., is one such case.
In Mastermine, the Court considered the extent to which user-initiated methodology of a Customer Relations Management (CRM) system may be recited in system claims. The district court found certain claims of the patents-in-suit (7,945,850 & 8,429,518), indefinite for improperly claiming two different subject-matter classes citing IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377(here). The Federal Circuit reversed.
In its reversal, the Federal Circuit provided helpful guidance to patent prosecutors on how to claim user-driven hardware features in the first instance, as well as how to impress upon a patent examiner that functional language of such claims does not cross the line to reciting a separate statutory class.
As a reminder, IPXL held that a single claim covering both an apparatus and a method of use of that apparatus is indefinite under 35 U.S.C § 112, 2nd paragraph. This is because simultaneously claiming both an apparatus and method of using the apparatus can make it unclear whether infringement occurs when one creates an infringing system, or whether infringement occurs when the user actually uses the system in an infringing manner.
The IPXL holding is often used to attack claims directed to systems receiving human input, such as many consumer electronics devices and software-based systems. For example, it is often cited by patent examiners in rejecting perceived “hybrid claims.” In many cases, however, a rejected hybrid claim is nothing more than an apparatus claim that recites system functionality.
Turning back to Manstermine, claim 8 of the ‘850 patent (system claim) was analyzed as to its use of active verbs in association with user interaction. The relevant portion of claim 8 is reproduced below.
a reporting module installed within the CRM software application . . . ;
wherein the reporting module installed within the CRM software application presents a set of user selectable database fields as a function of the selected report template, receives from the user a selection of one or more of the user-selectable database fields, and generates a database query as a function of the user selected database fields;
In explaining its reversal of the lower court’s indefiniteness finding, the Court walked through a number of post-IPXL cases, distinguishing the differences between the claims in those cases and the Mastermine claims. The Court explained that unlike in IPXL, the Mastermine claims merely use permissible functional language to describe the capabilities of the claimed system, it is clear that infringement occurs when one makes, uses, offers to sell, or sells the claimed system.
Particularly useful is the Court’s discussion of IPXL in the context of these claims, and in comparison to past claims of other post-IPXL cases:
Though claim 8 (above) includes active verbs—presents, receives, and generates—these verbs represent permissible functional language used to describe capabilities of the “reporting module.” . . . the claims at issue here merely claim that the system possesses the recited structure capable of performing the recited functions. These claims . . .here do not claim activities performed by the user. While these claims make reference to user selection, they do not explicitly claim the user’s act of selection, but rather, claim the system’s capability to receive and respond to user selection. The limitations at issue here (“receiv[ing] from the user a selection” and “generat[ing] a database query as a function of the user selected database fields”) focus on the capabilities of the system, whereas the claims in IPXL Holdings (“the user uses the input means”) . . . focus on specific actions performed by the user. Moreover . . .the functional language here does not appear in isolation, but rather, is specifically tied to structure: the reporting module installed within the CRM software application.
(internal quotes and citations omitted, emphasis added)
Prosecutors in the software/electronic arts will find this case helpful. It should be particularly useful in dealing with rejections from patent examiners struggling with the distinction between true hybrid claims and system functionality driven by user interaction.