The Central District of California recently held a dependent patent claim indefinite for failing to “specify a further limitation of the subject matter claimed” under 35 U.S.C. § 112. BlackBerry Limited v. Facebook, Inc. et al, No 18-1844-GW(KSx) (C.D. Cal. Apr. 5, 2019).
Plaintiff, BlackBerry Limited, alleged infringement of United States Patents No. 8,301,713; 8,296,351; 8,676,929, and 8,209,634 by both Defendants, Facebook, Inc. and Snap, Inc. Following a Markman hearing, the Court construed a plurality of claim terms. This blog post discusses dependent claim 2 of the ‘929 patent, which the Court held to be indefinite under 35 U.S.C. § 112(d).
Claims 1 and 2 of the ‘929 patent are reproduced here (emphasis added):
- A method for pushing information to a mobile device, the method comprising:
detecting a triggering event comprising a time triggering event;
determining, by a server, information relevant to the detected triggering event from among information stored in one of a plurality of memory location channels, wherein the information is stored in the one of the plurality of memory location channels based on a category of the information matching a pre-defined category of the one of the plurality of memory location channels;
when the information relevant to the detected triggering event comprises content information, inserting to the content information, by the server, a meta tag for one or more advertisements to be displayed with the content information, wherein the meta tag identifies the one or more advertisements and advertisement display requirements, and wherein the one or more advertisements are selected based on the detected triggering event; and
transmitting the content information that includes meta tag to the mobile device.
- The method of claim 1, further comprising when the information relevant to the detected triggering event comprises advertisement, transmitting the advertisement to the mobile device instead of the content information that includes the meta tag.
Defendants argued that dependent Claim 2 “has impermissibly added a new limitation beyond the subject matter of Claim 1” because “Claim 1 makes no mention of information relevant to the detected triggering event comprising an advertisement.” The Court identified inconsistencies between the two claims in an example “where ‘information relevant to the detected triggering event’ comprises both content information and advertisement.” The Court explained that, in this example, “Claim 1 would require that…the content information with a meta tag are transmitted to the mobile device,” and “Claim 2 would require that…the advertisement is transmitted to the mobile device instead of the content information.” The fatal problem the Court identified in this example is that, contrary to § 112(d), “it would therefore be possible to infringe Claim 2 without infringing Claim 1.” As support, the Court cited Ferring B.V. v. Watson Labs., Inc.-Fla., 64 F.3d 1401,1411 (Fed. Cir. 2014), holding that a party cannot infringe a dependent claim without also infringing the independent claim.
Plaintiff argued “that the Court’s example was precluded by the patent specification.” Specifically, Plaintiff argued that the specification “limits the meaning of ‘information relevant to the detected triggering event’ such that it can never include both content information and advertisement.” However, the Court refused to import this limitation from the specification into the claims, and instead, in relying on the example identified above, found that “Claim 2…by its very nature, requires that ‘information relevant to the detected triggering event’ include both content information and advertisement.” In other words, “Claim 2 simply adds that, in addition to the content information required by Claim 1, information relevant to the detected triggering event must also include advertisement.” See Michilin Prosperity Co. v. Fellowes Mfg. Co., 450 F. Supp. 2d 35, 39 (D.D.C. 2006), dismissed sub nom. Michilin Prosperity Co. v. Fellows Mfg. Co., 230 F. App’x 996 (Fed. Cir. 2007). Accordingly, the Court found Claim 2 to be indefinite.
Lessons for Practice
While conditional claim limitations should be avoided wherever possible, when conditional claim limitations are needed, this case illustrates that mutual exclusivity of the conditions should be made apparent in the claim language. In the present case, neither Claim 1 nor Claim 2 claimed mutual exclusivity of the content information and advertisement, and the Court refused to import such a limitation from the specification into the claims. Since no mutual exclusivity was claimed, the Court found Claim 2 to be indefinite because of the identified inconsistencies that existed between the claims in the example provided by the Court. In this situation, making mutual exclusivity apparent in the claims could have saved Claim 2 from being found indefinite.