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Invalidating Means Plus Function Claim Requires Expert Testimony -- Elcommerce.com, Inc. v. SAP AG, et. al

Revisiting the issue of written description support for a means plus function claim, the U.S. Court of Appeals for the Federal Circuit reversed a finding of invalidity of claims directed to supply chain monitoring, concluding that the written description did provide sufficient support as to structure for performing the claimed function.  Elcommerce.com, Inc. v. SAP AG, et. al, Case No. 11-1369 (Fed. Cir., Feb. 24, 2014) (Newman, J.) (Wallach, J., dissenting-in-part).

The patent asserted by Elcommerce.com is directed to a system and method of monitoring a supply chain of components in order to coordinate and stabilize the supply of components from various producers.  The district court found the system claims of the patent invalid for failure to comply with § 112, ¶¶2 and 6.  After reviewing the evidence presented, the district court concluded that a person of ordinary skill in the art would not be able to recognize the structure in the specification that corresponds to the recited function in certain means plus function claim elements.  Elcommerce.com appealed.

In connection with its presentation of evidence regarding the lack of corresponding structure in the specification for performing the function recited in certain means plus function claim elements, SAP maintained that, because an “absence of structure” was asserted, no expert testimony was required.  Elcommerce.com countered that evidence is required to establish that a person of ordinary skill in the art is unable to recognize corresponding structure in the written description, i.e., that attorney argument is insufficient.  Elcommerce.com further highlighted that in two reexamination proceedings, the U.S. Patent and Trademark Office (USPTO) never raised a § 112, ¶¶ 2, 6 issue.

The majority disagreed with the district court that the proof offered by the validity challenger was sufficient to conclude the claims were invalid under the clear and convincing evidence standard.  Beginning with the requirement that the structure must be evaluated from the position of persons having skill in the art and that invalidity must be established by clear and convincing evidence, the majority of the panel explained that:  “[t]he burden was on SAP to prove its case, and in the absence of evidence provided by technical experts who meet the Daubert criteria there is a failure of proof.  Attorney argument is not evidence,” although the Court went on to note that expert opinion will not be needed for every situation.

In dissent, Judge Wallach noted what he characterized as a direct contradiction between the panel majority and the decision of the Federal Circuit in Noah Systems, Inc. v. Intuit Inc. (IP Update, Vol. 15, No. 4):  “In holding that SAP was required to provide expert testimony to prove indefiniteness, the majority contradicts Noah . . . where this court affirmed the exclusion of expert testimony from the indefiniteness inquiry when there was a total absence of corresponding structure.”  The dissent notes that the apparent contradiction was not acknowledged by the majority.  The dissent also noted that while the majority made multiple references to the amount of description in the specification, it did “not, however, identify one relevant algorithm in any of these pages of description, let alone one algorithm corresponding to each claimed function.”

The dissent expressed concern for situations where judges identify corresponding structure for means plus functions claims, sometimes even in contradiction with patentee’s expert testimony:  “The pernicious result of the majority’s holding will be to deter district courts from performing that routine analysis, and to encourage boundless functional claiming.”

© 2021 McDermott Will & EmeryNational Law Review, Volume IV, Number 86
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