AN AUSTIN PATENT ATTORNEY’S OVERVIEW:

Function Media (FM) sued Google for infringement of three patents, 6,446,045; 7,240,025; and 7,249,059. These patents were directed for ways to facilitate advertisements on media outlet that do not have the same requirements. Such as, one media outlet may publish advertisements in a square box while a second media outlet may publish advertisements in a rectangular box. In Function Media’s patents a central computing system creates and publishes advertisements between sellers selling an advertisement and a media venue.

A representative claims of the Function Media’s patents is reproduced below (claim 1 of the ‘025 patent):

  1. A computer system for creating and publishing customized electronic advertisements, for a seller, to internet media venues owned or controlled by other than the seller, comprising:

a first interface to the computer system through which each of the internet media venues is prompted to input presentation rules for the internet media venue for displaying electronic advertisements on the internet media venue;

a first database storing the presentation rules input by the internet media venues through the first interface;

a second interface to the computer system through which a seller is prompted to input information to select one or more of the internet media venues and prompted to input information to create an electronic advertisement for publication to the selected internet media venues;

a second database storing the information input by the seller through the second interface; and

a computer controller of the computer system processing and publishing the electronic advertisement to one or more of the selected internet media venues in compliance with the presentation rules of the internet media venue, whereby the electronic advertisement is displayed on each of the one or more of the selected internet media venues in compliance with the presentation rules of the internet media venue.

 

Function media asserts that Google’s AdWord and AdSense systems violate these patents. After claim construction the district court found that the ‘045 patent was invalid because it included a “means for” limitation for transmitting, were no function of transmitting was recited in the specification. Further, the jury at the district court found that Google did not infringe the patents and that both patents were invalid. Function Media filed an appeal against the jury’s decisions.

The first issue discussed on appeal was whether the ‘045 was invalid. FM argued that the district court erred because the specification recited software that could be used to perform the means plus function steps. The court of appeals agreed with the district court reasoning that there is no specific algorithm in the specification, flow charts or otherwise performs a transmission function of data. The court of appeals further reasoned that FM’s specification does not recite hardware limitations or describe how the software performs a transmission. Accordingly, the court of appeals held that having failed to provide any disclosure of the structure for the transmitting function, FM cannot rely on the knowledge of one skilled in the art to fill in the gaps, and that the patent is invalid.

The second issue raised dealt with claim construction of several terms including the “creating and processing steps.” The parties agreed that the term create means to create an electronic advertisement for publication in a form customized to each of the selected internet media venue’s presentation rules. However, the parties disagreed with the processing steps. The district court agreed with Google and disagreed with FM holding that the claim states that the processing is done to the electronic advertisement and not the inputted information. Specifically, the court reasoned that the processing did not include creating the ad based on the inputted information because the advertisement was created before the processing step.

The third issue raised dealt with the claim construction for the “Selecting.” The district court agreed with FM’s claim construction that the selection meant “Software that enables the seller user to interact with the computer system through which the seller user is prompted to enter information to select one or more internet media venues.” Whereas, Google proposed that the selecting term meant “software or hardware at the seller location through which the seller is prompted to enter information to the computer system to enable the seller to select one or more internet media venues.” Under Google’s proposed construction, there could be no infringement because in Google’s system, Google matches ads with media venues and not the individual sellers.FM argues that a new trial is required because the court effectively applied a different construction to the term at summary judgment. The court of appeals rejected FM’s appeal for a new trial reasoning that that a denial of summary judgment is not properly reviewable on an appeal from the final judgment entered after trial. Because FM did not argue the claim construction given to the jury, FM waived its right to argue for a new trial based on the claim construction term given to the jury after the final judgment had been entered.

The fourth issue raised dealt with claim construction of the term “Publishing.” The court of appeals agreed with the district courts claim construction requiring the ads to be sent o the internet media venue, not simply made to look like they are on the internet media venue on the buyer’s computer as done on Google’s system. Among other reasons, the court of appeals reasoned that because Google’s systems do not require the internet media venue to host the ad, that Google’s systems do not infringe the claims.

AN AUSTIN PATENT ATTORNEY’S TAKE-A-WAYS:

  1. Dont write claims in means-plus-function form and if you do make sure there is adequate hardware limitations recited in the claims. In my patent disclosures, I try to include at least two figures that deal with hardware network components. The first figure will generally be an overview of the network including all of the main system elements, such as a network, processing server (where the invention is completed), and a receiving computing device (where the information is presented). In the second figure I will include hardware elements presented as modules that may be used by the processing server. These modules typically include an interface, communications device, processor, and module X to perform the invention. Then, I will describe different types of hardware elements that can be used to further describe these features. This if nothing else ads structure that can be used for enablement purposes.
  2. Claim structure is really important if nothing else because it sets up antecedent basis for other claim terms. Because antecedent basis is determined, this can be used to show in time when certain elements are created. In this case, because the processing steps used a created ad, it was held that the advertisement was already created. If the steps were truly interchangeable, these steps could have been arranged differently. For this reason, if I have an extra independent claim I try to flip the claim structure so different steps are performed in different orders.
  3. Instead of writing a claim limitation, I prefer to use the limitation of “transmitting.” If nothing else the connotation of “publishing” infers that an additional act will be needed by the second element. Instead, by merely “transmitting” data, it is vaguer on what is to be done with the data. I do not believe this would have helped in this case though, because Google’s systems appear to work via the browser and independent from other systems webpages.