Eon Corp. IP Holdings LLC v. AT & T Mobility LLC

• Decision Date: 06 May 2015
• Docket Number: Nos. 2014–1392,2014–1393.,s. 2014–1392
• Citation: 785 F.3d 616,114 U.S.P.Q.2d 1711
• Parties: EON CORP. IP HOLDINGS LLC, Plaintiff–Appellant v. AT & T MOBILITY LLC, Defendant–Appellee. EON Corp. IP Holdings LLC, Plaintiff–Appellant v. FLO TV Incorporated, Defendant–Appellee MobiTV Inc., Defendant–Appellee U.S. Cellular Corporation, Defendant–Appellee Sprint Nextel Corporation, HTC America Inc., Qualcomm, Inc., Simplexity, LLC, d/b/a Wirefly, Motorola Mobility LLC, Defendants–Appellees Letstalk.Com Inc., Defendant.
• Court: U.S. Court of Appeals — Federal Circuit

785 F.3d 616

114 U.S.P.Q.2d 1711

EON CORP. IP HOLDINGS LLC, Plaintiff–Appellant

v.AT & T MOBILITY LLC, Defendant–Appellee.

EON Corp. IP Holdings LLC, Plaintiff–Appellant

v.FLO TV Incorporated, Defendant–Appellee

MobiTV Inc., Defendant–Appellee

U.S. Cellular Corporation, Defendant–Appellee

Sprint Nextel Corporation, HTC America Inc., Qualcomm, Inc., Simplexity, LLC, d/b/a Wirefly, Motorola Mobility LLC, Defendants–Appellees

Letstalk.Com Inc., Defendant.

Nos. 2014–1392

2014–1393.

United States Court of Appeals, Federal Circuit.

May 6, 2015.

John L. Hendricks, Reed & Scardino LLP, Austin, TX, argued for plaintiff-appellant. Also represented by Daniel Robinson Scardino, John Matthew Murrell.

Diana Sangalli, Duane Morris LLP, Houston, TX, argued for defendant-appellee AT & T Mobility LLC. Also represented by Thomas W. Sankey ; Joseph Powers, Philadelphia, PA; Kristina Caggiano Kelly, Washington, DC; Jack B. Blumenfeld, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE.

Harrison J. Frahn, IV, Simpson Thacher & Bartlett, LLP, Palo Alto, CA, argued for all defendants-appellees in 2014–1393. Defendants-appellees FLO TV Incorporated, Qualcomm, Inc. also represented by Jeffrey Eric Ostrow, Jeffrey E. Danley, Patrick E. King ; Victor Cole, New York, N.Y.

Daralyn Jeannine Durie, Durie Tangri LLP, San Francisco, CA, for defendant-appellee MobiTV Inc. Also represented by Laura Miller.

Richard John O'Brien, Sidley Austin LLP, Chicago, IL, for defendant-appellee U.S. Cellular Corporation. Also represented by Robert D. Leighton ; Ryan C. Morris, Washington, DC.

Karen Ann Jacobs, Morris, Nichols, Arsht & Tunnell LLP, Wilmington, DE, for defendants-appellees Sprint Nextel Corporation, Simplexity, LLC, d/b/a Wirefly.

Sprint Nextel Corporation also represented by Megan E. Dellinger, Jennifer Ying.

Heidi Lyn Keefe, Cooley LLP, Palo Alto, CA, for defendant-appellee HTC America Inc. Also represented by Lam K. Nguyen, Mark R. Weinstein, Kyle Dakai Chen.

Steven Moore, Kilpatrick Townsend & Stockton LLP, San Francisco, CA, for defendant-appellee Motorola Mobility LLC. Also represented by Frederick Lee Whitmer, New York, N.Y.; Christopher Schenck, Seattle, WA; Carl Elliott Sanders, Winston–Salem, NC.

Before PROST, Chief Judge, NEWMAN and BRYSON, Circuit Judges.

Opinion

PROST, Chief Judge.

In these consolidated cases, EON Corp. IP Holdings LLC (“EON”) asserts U.S. Patent No. 5,663,757 (“'757 patent”) against a number of defendants. The district court granted the defendants' motion for summary judgment, holding all claims of the '757 patent invalid as indefinite. In particular, the district court found that the specification failed to disclose an algorithm to provide structure for various computer-implemented means-plus-function elements. On appeal, we affirm.

I. Background

The asserted '757 patent, which issued on September 2, 1997, is directed to software embodied in a “local subscriber data processing station” that operates in tandem with a television to interconnect various interactive features of the television. The software allows actions such as “impulse purchase transactions with immediate payment,” audience participation voting, and sorting television programs by theme. '757 patent col. 2 l. 65. EON alleges that “the modern iteration of the '757 Pa-tent's local subscriber data processing station is a smartphone with certain capabilities.” Appellant's Br. 5–6.

Consequently, on September 23, 2010, EON filed an action against seventeen defendants, including smartphone manufacturers, cellular network providers, and smartphone content providers (“the FLO TV case”). Nine months later, on June 14, 2011, EON sued several other defendants in a separate action (“the AT & T case”). The two cases were consolidated through claim construction.

At the same time, the '757 patent went through two reexaminations. The claims were amended in the first reexamination, and all claims as amended were confirmed in the second reexamination. However, on November 1, 2013, the defendants in the FLO TV action moved for summary judgment of invalidity for indefiniteness. To resolve the motion, the district court held a claim construction hearing on January 8, 2014, a summary judgment hearing on January 9, 2014, and a hearing to receive expert testimony on February 5, 2014. Soon after the hearings, the district court granted summary judgment to the FLO TV defendants, finding that all claims of the '757 patent were invalid as indefinite. The eight terms that were held to be indefinite are the following:

1. “means under control of said replaceable software means for indicating acknowledging shipment of an order from a remote station” (Claim 7);

2. “means controlled by replaceable software means operable with said operation control system for ... reconfiguring the operating modes by adding or changing features and introducing new menus” (Claims 1–6, 8–10);

3. “means responsive to said self contained software for establishing a mode of operations for selection of one of a plurality of authorized television program channels” (Claim 8);

4. “means establishing a first menu directed to different interactively selectable program theme subsets available from said authorized television program channels” (Claim 8);

5. “means for causing selected themes to automatically display a second menu” (Claim 8);

6. “means controlled by replaceable software means operable with said operation control system for establishing and controlling a mode of operation that records historical operating data of the local subscriber's data processing station” (Claim 9);

7. “means controlled by replaceable software means operable with said operat [ion] control system for establishing and controlling fiscal transactions with a further local station” (Claim 10); and

8. “means for establishing an accounting mode of operation for maintaining and reporting fiscal transactions incurred in the operation of the local subscriber's data processing station” (Claim 10).

Following its summary judgment order, the district court entered final judgment of invalidity on March 5, 2014 in the FLO TV case. The parties in the AT & T case then entered into a joint stipulation to final judgment of invalidity, which the district court granted on March 18, 2014. EON appeals, and we have jurisdiction under 28 U.S.C. § 1295(a)(1).

II. Discussion

We review the grant of summary judgment of indefiniteness de novo, applying the same standard used by the district court. Ethicon Endo–Surgery, Inc. v. U.S. Surgical Corp., 149 F.3d 1309, 1315 (Fed.Cir.1998). Summary judgment is appropriate if, viewing the evidence in the light most favorable to the non-moving party, the movant shows that there is no genuine dispute as to any material fact and the movant is entitled to judgment as a matter of law. Fed.R.Civ.P. 56 ; Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 255, 106 S.Ct. 2505, 91 L.Ed.2d 202 (1986). We review the district court's ultimate conclusion of indefiniteness under 35 U.S.C. § 112 de novo. Eidos Display, LLC v. AU Optronics Corp., 779 F.3d 1360, 1364 (Fed.Cir.2015). In this case, the district court made numerous detailed findings of fact. Because the indefiniteness inquiry here is intertwined with claim construction, see Atmel Corp. v. Info. Storage Devices, Inc., 198 F.3d 1374, 1379 (Fed.Cir.1999) (“[A] court's determination of the structure that corresponds to a particular means-plus function limitation is indeed a matter of claim construction.”), we review these subsidiary factual determinations for clear error. Teva Pharm. USA, Inc. v. Sandoz, Inc., ––– U.S. ––––, 135 S.Ct. 831, 836, ––– L.Ed.2d –––– (2015) ; see also Biosig Instruments, Inc. v. Nautilus, Inc., 783 F.3d 1374, 1377–78 (Fed.Cir.2015) ; Fed.R.Civ.P. 52(a)(6) (“Findings of fact ... must not be set aside unless clearly erroneous....”).

The parties agree that the claim terms at issue are all means-plus-function terms governed by 35 U.S.C. § 112 ¶ 6.¹ Section 112, paragraph 6 states that:

An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof.

Means-plus-function claim limitations under § 112 ¶ 6 must satisfy the definiteness requirement of § 112 ¶ 2. S3 Inc. v. NVIDIA Corp., 259 F.3d 1364, 1367 (Fed.Cir.2001).

The parties also agree that the functions claimed in the terms at issue are all performed by computer software. It is well-established that the corresponding structure for a function performed by a software algorithm is the algorithm itself. See WMS Gaming, Inc. v. Int'l Game Tech., 184 F.3d 1339, 1348–49 (Fed.Cir.1999). Accordingly, “[i]n cases involving a computer-implemented invention in which the inventor has invoked means-plus-function claiming, this court has consistently required that the structure disclosed in the specification be more than simply a general purpose computer or microprocessor.” Aristocrat Techs. Austl. Pty Ltd. v. Int'l Game Tech., 521 F.3d 1328, 1333 (Fed.Cir.2008).

A. The Katz Exception

In this case, EON does not dispute that the '757 patent discloses no algorithms. It is uncontested that the only structure disclosed in the '757 patent is a microprocessor. For this reason, EON relies on an exception to the algorithm rule created in In re Katz Interactive Call Processing Patent Litigation, 639 F.3d 1303 (Fed.Cir.2011). Katz held that a standard microprocessor can serve as sufficient structure for “functions [that] can be achieved by any general purpose computer without special programming.” Katz, 639 F.3d at 1316. In Katz, claim terms involving basic “processing,” “receiving,” and “storing” functions were not necessarily indefinite because a general purpose computer need not “be specially programmed to perform the recited function.” Id. However, other claim terms involving conditionally...