Federal Circuit Holds that Typhoon’s Patents Are Valid, but Not Infringed
By Marsha Sukach – Edited by Andrew Crocker
Typhoon Touch Techs. v. Dell, Inc., No. 2009-1589 (Fed. Cir. Nov. 4, 2011)
The Federal Circuit affirmed in part and reversed in part the ruling of the U. S.District Court for the Eastern District of Texas, which held that Typhoon’s patents that cover its “keyboardless” touch-screen computing system are invalid and not infringed.
Judge Newman, joined by Chief Judge Rader and Judge Prost, affirmed the district court’s judgment of noninfringement and upheld its interpretation of Typhoon’s U.S. Patents No. 5,379,057 and No. 5,675,362. The district court construed Typhoon’s patent claim for a portable, keyboardless computer as “requiring that a device, to be covered by the claim, actually performs, or is configured or programmed to perform, each of the functions stated in the claim.” Slip op. at 9. In so holding, the court disagreed with Typhoon’s argument that a device need only be capable of performing the stated function in order to meet the requirement.
However, the Federal Circuit reversed the summary judgment of invalidity on the ground of claim indefiniteness, saying that the claim term “means for cross-referencing” is supported by a description of the cross-referencing algorithm in the specification. Id. at 19.
PatentlyO provides an overview of the case. The Patent Prospector criticizes the decision, saying that it creates conflicting precedents.Typhoon Touch Technologies, the patent holder, sued Dell, Apple, and other manufacturers of tablet computers and handheld devices, alleging infringement of its software keyboard patents. The disputed claim terms were “memory for storing,” “processor for executing,” “operating in conjunction,” and “keyboardless.” Id. at 4. Relying on Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005), the court rejected Typhoon’s potential functionality argument. Typhoon had contended that it suffices for the memory to be capable of being configured to store data collection applications, even if it is not actually so configured, and made a similar argument for the term “operating in conjunction.” Id. at 6-10. The court also rejected Typhoon’s analysis of the other claim terms, interpreting “keyboardless” narrowly to mean “without a mechanically integrated keyboard.” Id. at 10.
The decision is notable in its detached reasoning process. The court did not focus on the invention itself, instead looking at the disputed claim terms and discussing them in the context of the specification.
In reversing the district court’s summary judgment of invalidity, the court looked at the claim term “means for cross-referencing said responses with one of said libraries of said possible responses.” Id. at 13. While the district court held the “means for cross-referencing” limitation invalid as indefinite, the Federal Circuit rejected this conclusion. The court found that the specification disclosed a cross-referencing algorithm in plain language and stated that it is unnecessary to include the code itself. Citing Finisar Corp. v. DirecTV Group, 523 F.3d 1323 (Fed. Cir. 2008), the court stated that a procedural algorithm can be expressed in any understandable terms that provide sufficient structure. The patent “need only disclose sufficient structure for a person of skill in the field to provide an operative software program for the specified function.” Id.
This decision is important in its focus on claim construction, interpreting functional claim limitations narrowly. The Patent Prospector criticizes the decision, saying that the unnecessarily expansive holding on indefiniteness creates self-contradictory case law. PatentlyO places the case in the context of ongoing debate within the Federal Circuit over claim construction that surfaced in Retractable Techs., Inc. v. Becton, Dickinson and Co., No. 2010-1402 (Fed. Cir. 2011), previously covered by the Digest.
Marsha Sukach is a 1L at Harvard Law School.