There are only so many ways to get rid of claims early in the case. One of them is arguing indefiniteness at claim construction, for the judges who permit that.
Indefiniteness at Markman typically invoves either a Nautilus-style argument about a term lacking reasonable certainty, or a § 112 ¶ 6 argument that a means-plus-function term lacks corresponding structure in the specification.
Today, Judge Andrews addressed such a § 112 ¶ 6 argument, and found both that software terms reciting an "engine" were means-plus-function terms, and that the terms lacked corresponding structure in the specification. First, he found that "engine" is a "nonce word" that doesn't refer to a specific structure—breaking with at least one case that found the opposite:
I agree with Defendant that “analysis engine” is a means-plus-function limitation. Defendant has overcome the presumption that “analysis engine” is not subject to § 112, ¶ 6 by showing the claim fails to “recite sufficiently definite structure.” . . . The parties agree that an “engine” in this context refers to a program or part of a program to perform a function or manages data. . . . “Engine” appears to be synonymous with “module,” which is recognized as a common “nonce” word. Williamson, 792 F.3d at 1350 (finding “module” to mean “a generic description for software or hardware that performs a specified function” to be a “well-known nonce word”); see also Parity Networks, LLC v. ZyXEL Commc'ns, Inc., 2020 WL 8569299, at *6 (C.D. Cal. Dec. 22, 2020) (finding “engine” was a nonce word in the term “multicast engine”). But see Stragent, LLC v. Amazon.com, Inc., 2011 WL 13152568, at *4 (E.D. Tex. June 27, 2011) (finding “engine” conveyed structure and was not subject to § 112, ¶ 6).
The argument that the "analysis engine" was part of the novelty of the patent was not enough to save it—and that argument may have even hurt the plaintiff:
The term “analysis” does not add sufficient structure to take the term out of § 112, ¶ 6. Defendant’s expert states that a POSA “would not have been familiar with a specific combination of software and/or hardware referred to as an ‘analysis engine.’” (D.I. 64, Ex. 12, ¶ 38). I do not read Plaintiff’s expert to contradict Defendant’s expert’s statements. Plaintiff’s expert states, “A [POSA] would further understand that these engines are part of the novelty of the inventions described and therefore not predate the patent . . . .” (D.I. 64, Ex. P, ¶ 21). If the “analysis engine” is part of the novelty of the invention, it would follow that a POSA would not recognize the “analysis engine” as a sufficiently definite structure or a common name for a class of structures. Plaintiff’s expert does not state that the term is commonly used to connote structure nor that the term is used to reference conventional programs that a POSA would recognize as an “analysis engine.” Cf. Dyfan, LLC v. Target Corp., 28 F.4th 1360, 1368-69 (Fed. Cir. 2022) (finding § 112, ¶ 6 did not apply to “code” or “application” because of unrebutted expert testimony that the terms connoted structure and a POSA would “have known of off-the-shelf code and applications” for performing the function); Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1008 (Fed. Cir. 2018) (finding § 112, ¶ 6 did not apply to “user interface code” or “program” because a POSA could discern these are “specific references to convention graphical user interface programs or code, existing in prior art at the time of the inventions”).
Judge Andrews found plaintiff's arguments conclusory, and that the specification failed to actually set forth the algorithm (it identified the data and the results, but not the process for achieving those results):
At the Markman Hearing, I asked Plaintiff to “show me an algorithm for how the analysis engine or the event classification engine actually does its thing.” (Markman Hearing Tr. 74:4-6). Plaintiff claimed attribute selection, best fit, linear regression, and generating a likely distribution of values were algorithms for the “analysis engine.”
I find there is insufficient structure disclosed in the specification. As an initial matter, I do not believe that a conclusory statement that algorithms are disclosed followed by string cites are sufficient to demonstrate that “the intrinsic evidence clearly links or associates that structure to the function recited in the claim.” Williamson, 792 F.3d at 1352. I also do not find the disclosure in the specification to set forth specific algorithms for performing the claimed functions. For example, ’983 Patent, col. 6:18-46 describes “The Water Network Analysis Engine,” but the description just describes the data to be analyzed (i.e., the inputs) and what is identified (i.e., the outputs). How the analysis is accomplished or performed is not described.
I am not persuaded by Plaintiff’s identification of algorithms at the Markman Hearing that the specification discloses the required algorithms. Neither Plaintiff’s expert nor Defendant’s expert identifies these as algorithms for the “analysis engine.” Plaintiff’s expert notes that the specification describes embodiments using “predictor modules for generating a statistical distribution of likely values of the meter data” and “anomaly detector modules for comparing” meter data (D.I. 64, Ex. P, § 22), but I do not believe this is sufficient disclosure of algorithms providing the necessary structure. See Arendi S.A.R.L. v. LG Elecs., Inc., 2019 WL 3891150, at *13 (D. Del. Aug. 19, 2019) (stating the issue is “whether a POSA would recognize the specification itself as disclosing a particular algorithm or algorithms for implementing the . . . function”).
The Court therefore found "analysis engine" indefinite. It found "event classification engine" indefinite for the same reasons:
Like “analysis engine,” I find the term “event classification engine” is indefinite because the specification fails to disclose adequate structure. Defendant’s expert states that a POSA could program a computer to perform the recited functions, but a POSA would not be instructed “to use any specific complete algorithm for any of the recited functions.” . . .
Plaintiff only provides a string cite with a conclusory statement that an algorithm is described. I find this to be insufficient for the reasons stated above. . . . Plaintiff’s expert cites to part of the specification that recites “an event classification engine configured to identify water utility network events based on the anomalies, the water network events comprising leakage events and other events regarding quantity or quality of water flowing through the pipes and network devices and operation of the water utility network,” as an example of the description of the term. . . . This part of the specification, however, just describes what the “event classification engine” does, not an algorithm or structure for accomplishing its functions.
It can sometimes be a tough call whether to pursue means-plus-function constructions and indefiniteness at Markman, both because it's a two-step argument ((1) it's an MPF term, (2) there is no corresponding structure) and because it feels judge-depedent. But this is a good example of the circumstances where it can be worthwhile to do so.
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