{"id":782,"date":"2009-10-17T15:44:59","date_gmt":"2009-10-17T21:44:59","guid":{"rendered":"http:\/\/www.717madisonplace.com\/?p=782"},"modified":"2009-10-17T15:44:59","modified_gmt":"2009-10-17T21:44:59","slug":"you-be-the-judge-i4i-v-microsoft-part-ii","status":"publish","type":"post","link":"https:\/\/www.717madisonplace.com\/?p=782","title":{"rendered":"You be the judge — i4i v. Microsoft (Part II)"},"content":{"rendered":"

I find it pretty tough to read too much out of the oral argument in i4i v. Microsoft<\/span>.\u00a0 It was\u00a0strange that Judge Schall did not ask many questions during the oral argument — which might be an indicator of his positions on the issues.\u00a0 And, I found it strange that the panel did not have many questions for i4i’s counsel about the claim construction issues raised by Microsoft’s counsel.\u00a0 Instead, the\u00a0panel seemed to focus more on the damages issues when questioning i4i’s counsel.<\/p>\n

What really\u00a0piqued my interest is an issue that isn’t on appeal.\u00a0 Namely, I’m curious how the Federal Circuit’s recent line of cases on “full scope of enablement” would affect the validity of the 5,787,449\u00a0patent.\u00a0 Figures 7 and 9 from the ‘449 patent are shown below. Counsel for i4i referred to these figures during oral argument by stating:\u00a0<\/p>\n

\u00a0<\/p>\n

The fact is that Your Honors have focused correctly on Figure 9. You can also focus on Figure 7, which also shows that the user has access at the same time to both the mapped content and the metacode map. And you can also look at the very top, oval 132, input device for creating content and selecting metacodes. The user has access to both, and it’s not only the Figure 9 statement that has the statement about updating. But, if you look at column 6, lines 14 and 15, the mapped content area and metacode map is updated as changes are made.<\/p><\/blockquote>\n

\u00a0<\/p>\n

\"Fig.

Fig. 7<\/p><\/div>\n

\"Fig.

Fig. 9<\/p><\/div>\n

The ‘449 patent has an independent system\u00a0claim and an independent method claim.\u00a0 Only the method claim was asserted.\u00a0 These system and method claims are shown below:<\/p>\n

\"\"<\/p>\n

\"\"<\/p>\n

As you can see, figures 7 and 9\u00a0utilize blocks with the “means for” language contained in the blocks.\u00a0 There\u00a0appears to be\u00a0no structure identified in the figures\u00a0for at least some of\u00a0the “means for”\u00a0blocks.\u00a0 Furthermore, the detailed description linked to these blocks\u00a0appears to describe these blocks with the same “means for” language used inside the blocks (e.g., col. 14, lines 26-28 “compiles the selected metacodes using the means for selecting, locating, and addressing metacodes represented in Box 144”).\u00a0 Hence,\u00a0one might argue\u00a0that not all of \u00a0the “means” elements in the claims are\u00a0linked to\u00a0any structure in the specification or drawings and thus would fail to meet the requirements of section 112, paragraph 6.\u00a0 See<\/span> Default Proof Credit Card Systems, Inc. v. Home Depot U.S.A., Inc.<\/span>, 412 F.3d 1291 (Fed. Cir. 2005) (“A structure disclosed in the specification qualifies as ‘corresponding’ structure only if the specification or prosecution history clearly links or associates that structure to the function recited in the claim . . . . This duty to link or associate structure to function is the quid pro quo for the convenience of employing section 112, paragraph 6”).<\/p>\n

In Automotive Technologies International, Inc. v. BMW of North America, Inc.<\/span>, 501 F.3d 1274 (Fed. Cir. 2007), the Federal Circuit applied a full scope of enablement theory.\u00a0\u00a0The court\u00a0noted that the mere boxed figure of an electronic sensor and a few lines of description fail to apprise one of ordinary skill how to make and use an electronic sensor.\u00a0<\/p>\n

\"\"<\/a><\/p>\n

Thus, a means plus function limitation that was construed to include both mechanical and electrical sensors was deemed not to be enabled to the “full scope of enablement” even though the mechanical sensor was sufficiently enabled.\u00a0 And, in Sitrick v. Dreamworks<\/span>, 516 F.3d 993 (Fed. Cir. 2008), the Federal Circuit found that a controller represented by a blank box 260C<\/p>\n

\"sitrick-image\"<\/a><\/p>\n

was not sufficiently enabled to perform the steps of “selecting” and “analyzing” a predefined character image in a movie or “integrating” or “substituting” an image in movies.\u00a0<\/p>\n

Taken to its extreme, one wonders whether under the “full scope of enablement” theory\u00a0an insufficiently enabled means plus function element would\u00a0necessarily\u00a0require that\u00a0a corresponding step (or act) in a method claim be deemed\u00a0insufficiently\u00a0enabled.\u00a0 Thus, for example, \u00a0if the claim element “means for compiling said metacodes of the menu by locating, detecting and addressing the metacodes in the document to constitute the map and storing the map in the metacode storage means” in claim 1 had been found to be insufficiently enabled, would it necessarily mandate that the corresponding claim element “compiling a map of the metacodes in the distinct storage means, by locating, detecting and addressing the metacodes” in claim 14 was insufficiently enabled.<\/p>\n","protected":false},"excerpt":{"rendered":"

I find it pretty tough to read too much out of the oral argument in i4i v. Microsoft.\u00a0 It was\u00a0strange that Judge Schall did not ask many questions during the oral argument — which might be an indicator of his positions on the issues.\u00a0 And, I found it strange that the panel did not have […]<\/p>\n","protected":false},"author":1,"featured_media":0,"comment_status":"closed","ping_status":"open","sticky":false,"template":"","format":"standard","meta":{"footnotes":""},"categories":[1],"tags":[],"_links":{"self":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/782"}],"collection":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts"}],"about":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/types\/post"}],"author":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/users\/1"}],"replies":[{"embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcomments&post=782"}],"version-history":[{"count":76,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/782\/revisions"}],"predecessor-version":[{"id":5898,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=\/wp\/v2\/posts\/782\/revisions\/5898"}],"wp:attachment":[{"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fmedia&parent=782"}],"wp:term":[{"taxonomy":"category","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Fcategories&post=782"},{"taxonomy":"post_tag","embeddable":true,"href":"https:\/\/www.717madisonplace.com\/index.php?rest_route=%2Fwp%2Fv2%2Ftags&post=782"}],"curies":[{"name":"wp","href":"https:\/\/api.w.org\/{rel}","templated":true}]}}