Means-Plus-Function Claim Must Disclose Some Algorithm For Performing The Function And Cannot Merely Restate The Function Recited In The Claim

In Augme Technologies, Inc. v. Yahoo! Inc., Nos. 13-1121, -1195 (Fed. Cir. June 20, 2014), the Federal Circuit affirmed the district court's grant in Yahoo! Inc.'s ("Yahoo!") favor of SJ of noninfringement of U.S. Patent Nos. 6,594,691 ("the '691 patent") and 7,269,636 ("the '636 patent) (collectively "the Augme patents"), and SJ of indefiniteness of the '691 patent. Also, the Court affirmed the district court's claim construction of the term "server hostname" and entry of judgment that Yahoo!'s U.S. Patent No. 7,640,320 ("the '320 patent") was infringed, and affirmed the district court's conclusion that the '320 patent was not indefinite.

Augme Technologies, Inc. ("Augme") sued Yahoo!, alleging infringement of certain claims of the Augme patents, and Yahoo! counterclaimed that Augme and World Talk Radio, LLC (collectively "Appellants") infringed certain claims of the '320 patent. After claim construction, the district court granted Yahoo!'s motion for SJ, finding noninfringement of the Augme patents, either literally or under the DOE. The district court also granted Yahoo!'s motion for SJ of invalidity, finding that certain means-plus-function claims of the '691 patent were indefinite. The district court further determined that the asserted claim of the '320 patent was not indefinite. Appellants had stipulated to infringement of the '320 patent based on the district court's claim construction. Appellants appealed.

The Augme patents disclose adding functionality, such as media or advertisements, to a web page. As articulated by the Federal Circuit, the asserted claims require two code modules: a first code module embedded in a web page, and a second code module that contains the code for the added functionality and a "service response," where the first code module issues a command to retrieve the second code module from a server. As the Court further detailed, the accused Yahoo! systems use "smart tags" (the alleged embedded first code module) embedded into a web page. The smart tag is executed to download an intermediary "smart code," which is then executed to send parameters to the Yahoo! server and to request an "imp code" (the alleged second code module). The "imp code" that is returned to the browser includes an "ad code" (the alleged service response) that either includes an advertisement for display or is blank.

"[T]o meet the definiteness requirements of 35 U.S.C. § 112, second paragraph, the specification must disclose an algorithm...