O2 Micro Does Not Apply When Jury Explicitly Told By Court To Use Only The Court’s Claim Construction

In Function Media, L.L.C. v. Google Inc., No. 12-1020 (Fed. Cir. Feb. 13, 2013), the Federal Circuit affirmed the district court's determination that one patent was invalid as indefinite and the jury's verdict that two other patents were invalid and not infringed. The Court also held that the district court did not abdicate its responsibility to construe the disputed claim terms or incorrectly deny a motion for new trial, finding that the verdicts of infringement and invalidity were not irreconcilable.

Function Media, L.L.C. ("FM") filed suit against Google Inc. ("Google"), claiming that Google infringed U.S. Patent Nos. 6,446,045 ("the '045 patent"); 7,240,025 ("the '025 patent"); and 7,249,059 ("the '059 patent"). The purpose of the invention is to facilitate advertising on multiple advertising outlets, such as newspapers and websites, by automatically formatting the ads to fit each publisher's requirements and sending them out for publication. After claim construction, the district court held that the '045 patent was indefinite and therefore invalid because the specification lacked sufficient structure for the claim's mean-plus-function term, "means for transmitting." The jury found the claims of the '025 and '059 patents to be invalid and not infringed. In post-trial motions, FM argued that the verdict was against the great weight of evidence and irreconcilable. The district court granted JMOL for certain claims of the '025 patent, finding that Google did not submit sufficient evidence for the jury to find that those claims were invalid. Therefore, these claims remained valid and not infringed. FM appealed.

"While it may seem harsh, requiring objections to be made before the jury is dismissed is the only way to efficiently cure potential inconsistencies when there is not a detailed special verdict to review." Slip op. at 32.

Turning first to the means-plus-function claim, the Federal Circuit held that, "[a]t most, the '045 Patent specification discloses that the structure behind the function of transmitting is a computer program that transmits," but beyond the program's function, no algorithm describing the transmission function is disclosed. Slip op. at 10-11. Citing Aristocrat Technologies Australia Pty Ltd. v. International Game Technology, 521 F.3d 1328, 1333 (Fed. Cir. 2008), the Court disagreed with FM's argument that a person skilled in the art could provide an operative software program for the specified function, holding that...