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Justin E. Gray

Partner at Eversheds Sutherland (US) LLP

Former Adjunct Professor at Northwestern University School of Law

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Federal Circuit Finds Lack of Sufficient Structure to Support Means-Plus-Function Claim Language, Reverses District Court

ePlus, Inc. v. Lawson Software, Inc. (Fed. Cir. Nov. 21, 2012)

In this case, the Federal Circuit reversed the district court and found that the system claims of the patents-in-suit were indefinite as they included means-plus-function language without disclosure of corresponding structure in the specification.  The patents-in-suit related to enabling businesses and organizations to use computer networks to purchase goods.

The claims at issue each contained the limitation "means for processing said requisition to generate purchase orders for said selected matching items."  The defendant argued during summary judgment that this limitation was indefinite because the specification did not disclose adequate structure for this limitation.  The district court denied the defendant's motion.

At trial, the defendant did not raise the indefiniteness issue.  Nor did the defendant raise this issue in its first JMOL motion.  At the hearing for that JMOL motion, the defendant told the Court it disagreed with the Court's indefiniteness ruling but since indefiniteness was an issue of law, defendant believed that the district court did not need to "rerule" on it to preserve the issue for appeal.  In the defendant's renewed JMOL motion, it generally argued that the system claims were indefinite and incorporated by reference the indefiniteness arguments it made during claim construction and summary judgment.  The district court denied the motion.

On appeal, the plaintiff first argued that the defendant waived its right to appeal indefiniteness because the defendant did not raise the issue of indefiniteness at trial and the defendant's JMOL motions were not sufficiently specific.  The Federal Circuit disagreed, stating that "indefiniteness is a question of law and in effect part of claim construction ... when the arguments with respect to indefiniteness are not being raised for the first time on appeal, we do not readily find a waiver." And the Federal Circuit determined from the record that "the district court did not intend to revisit the indefiniteness issue once it denied summary judgment ... [defendant] was not required to ignore the writing on the wall and press the issue over and over again to preserve it for appeal."

The plaintiff next argued that the claims at issue were indefinite as the specification failed to identify sufficient structure for the "means for processing" limitation in the claims.  While the district court had determined that the specification disclosed "a purchase order generation module", the Federal Circuit found that "there is no mention of such structure in the specification."  The Federal Circuit went on to explain that the three passages of the specification relied on by both the district court and the plaintiff did not disclose any structure related to this claim limitation.

Plaintiff also argued that it was not required to disclose structure corresponding to the "means for processing" limitation in the specification because that functionality was already known in the prior art.  The Federal Circuit disagreed, explaining that "[t]he indefiniteness inquiry is concerned with whether the bounds of the invention are sufficiently demarcated, not with whether one of ordinary skill in the art may find a way to practice the invention."  As the specification did not disclose sufficient structure, "[t]he patentee has in effect claimed everything that generates purchase orders under the sun" and the system claims were therefore indefinite.