- From LexisNexis® Mealey’s™ Daily Legal News.
Granting a motion for summary judgment by Microsoft Corp., a Washington federal judge on Feb. 7 found three independent and 10 dependent claims in patents held by Motorola Inc. to be invalid as indefinite, per the guidelines of U.S. Code Title 35 Section 112, dismissing those claims from a patent dispute between the two technology corporations (Microsoft Corp. v. Motorola Inc., et al. No. 2:10-cv-01823, W.D. Wash.).
Patent Licensing Dispute
Microsoft and Motorola sued each other in two lawsuits over Motorola’s patents related to “systems and methods for encoding and decoding a bitstream (or sequence) of digital video data.”
Motorola alleged that Microsoft infringed its patents with its Windows 7 operating system and Microsoft Internet Explorer 9.
Microsoft filed the present lawsuit in November 2010 in the U.S. District Court for the Western District of Washington, accusing Motorola of seeking unreasonable royalty rates for its patents and seeking a declaration that it is entitled to a license on RAND [reasonable and nondiscriminatory] terms for all patents subject to Motorola’s commitments to two international standards-setting organizations. In its present motion, Microsoft sought summary judgment on whether the means-plus-function claims within three of Motorola’s patents are indefinite.
The patents at issue in the present motion are U.S. Patent Nos. 7,310,374, 7,310,375 and 7,310,376, each of which pertain to encoding and decoding “a picture in a digital video sequence . . . as a ‘frame’ . . . or as two ‘fields.’” The technology disclosed in the patents “divide[s] individual pictures into ‘macroblocks’ which can be divided even further into ‘blocks’ for efficient encoding and decoding.”
Means Plus Function
The two means at issue in the present motion pertain to a “means for decoding at least one of a plurality of smaller portions of a time of the picture that is encoded in frame coding mode” and a “means for using said plurality of decoded smaller portions to construct a decoded picture.” Microsoft sought dismissal of one independent claim from each patent and related independent claims. Microsoft asserted that the claims are invalid as indefinite because the patents “do not adequately describe a corresponding structure,” which is necessary for means-plus-function claims.
Judge James L. Robart noted that the parties agree that the two means at issue constitute means-plus-function claim limitations and the function of each is that stated precisely by the language of the claim following each within the corresponding patent claims. Per In re Donaldson Co. (16 F.3d 1189, 1195 [Fed. Cir. 1994]), the judge stated that if a patent “applicant fails to set forth an adequate disclosure” corresponding to a claimed function, “the applicant has in effect failed to particularly point out and distinctly claim the invention as required” by Section 112.