Eds. Note -- I had this whole 10 line joke song about means plus function claims to the tune of conjunction junction, then I lost power for a second and its all gone. Just imagine it was groundbreaking stuff. Hug your generators folks.
Judge Andrews issued an interesting decision yesterday that illustrates the unique difficulties of proving infringement of a means + function claim.
In ViaTech Techs., Inc. v. Adobe Inc., C.A. No. 20-538-RGA (D. Del. July 17, 2024), the Court construed a means + term as having two functions:
- communicating with a dynamic license database, and
- monitoring use of the digital content by a user to determine (yadda, yadda, not important)
In describing the Corresponding structure, Judge Andrews listed passages from the specification, but did not specifically note which portions provided structure for function 1, and which provided structure for function 2.
At trial, the plaintiff's expert generally discussed both functions but only referred to the structures that related to the 2nd function. Defendant thus moved for JMOL which Judge Andrews granted:
The claim construction did not specify which of the ten cited specification passages provided sufficient structure, either alone or in combination, for each of the two functions. Review of some of the other cited passages shows that the specification does disclose structure [for function 1] . . . Plaintiff does not contend that Dr. Madisetti presented any testimony that related to the above-described structure. Although I do not necessarily agree with Defendant's contention that Plaintiff needed to prove exactly five elements for the LMCM limitation, I conclude that Plaintiff did not submit evidence of corresponding structure (or any structure at all) in the accused products for "communicating with a dynamic license database."
Id. at 8-9.
You may have clocked that Judge Andrews actually held oral argument on the JMOL motions, which is pretty unusual. Look for a post in the near future analyzing if there's any correlation between argument on post-trial motions and success.
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