Mastermine Software, Inc. v. Microsoft Corporation , 874 F.3d 1307 ( 2017 )

United States Court of Appeals
for the Federal Circuit
______________________
MASTERMINE SOFTWARE, INC.,
Plaintiff-Appellant
v.
MICROSOFT CORPORATION,
Defendant-Appellee
______________________
2016-2465
______________________
Appeal from the United States District Court for the
District of Minnesota in No. 0:13-cv-00971-PJS-TNL,
Judge Patrick J. Schiltz.
______________________
Decided: October 30, 2017
______________________
ADAM ROGER STEINERT, Fredrikson & Byron, PA,
Minneapolis, MN, argued for plaintiff-appellant. Also
represented by KURT JOHN NIEDERLUECKE, NIKOLA
DATZOV, GRANT DAVID FAIRBAIRN, LORA MITCHELL
FRIEDEMANN.
ERICA D. WILSON, Walters Wilson LLP, Redwood City,
CA, argued for defendant-appellee. Also represented by
ERIC STEPHEN WALTERS.
______________________
Before NEWMAN, O’MALLEY, and STOLL, Circuit Judges.
2 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
STOLL, Circuit Judge.
MasterMine Software, Inc. appeals from a stipulated
judgment of noninfringement and invalidity following
adverse claim construction and indefiniteness rulings
from the United States District Court for the District of
Minnesota. Because the district court’s construction is
supported by the intrinsic evidence, and the claims do not
improperly claim both an apparatus and a method of
using the apparatus, we affirm the court’s claim construc-
tion, reverse the court’s indefiniteness determination, and
remand for proceedings consistent with this opinion.
BACKGROUND
MasterMine sued Microsoft Corporation for infringe-
ment of its two related patents, U.S. Patent
Nos. 7,945,850 and 8,429,518. MasterMine asserted
claims 1, 8, 10, and 12 of the ’850 patent and claims 1, 2,
and 3 of the ’518 patent.
Both patents disclose methods and systems “that
allow[] a user to easily mine and report data maintained
by a customer relationship management (CRM) applica-
tion.” ’850 patent, Abstract. 1 CRM applications “are used
to manage all aspects of customer relations by integrating
a company’s sales force, processes, sales channels and
customers into one environment.” Id. at col. 1 ll. 11–14.
The patents describe a process by which an electronic
worksheet is automatically created. Within this electron-
ic worksheet, a multi-dimensional analysis table, known
as a pivot table, “allows the user to quickly and easily
1 Because the ’850 and ’518 patents share the same
specification, we cite only to the ’850 patent, unless oth-
erwise indicated, with the understanding that these
citations also refer to the corresponding sections of the
’518 patent.
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 3
summarize[] or view large amounts of CRM data.” Id. at
col. 2 ll. 22–24. “For example, the user can rotate the
rows and columns of [a pivot table] to see different sum-
maries of the CRM data, filter the data by displaying
different pages, or display the details for [an] area of
interest.” Id. at col. 2 ll. 24–27. The patents further
describe that a user is able to “analyze the captured CRM
data and ‘mine’ the data for important insights” upon
generation of the pivot table. Id. at col. 3 ll. 5–6.
Following briefing and argument, the district court
entered a claim construction order, construing, inter alia,
the term “pivot table.” MasterMine Software, Inc. v.
Microsoft Corp., No. 13-CV-0971, 2016 WL 8292205, at *2
(D. Minn. May 6, 2016) (“Claim Construction Order”).
The district court construed “pivot table,” the term Mas-
terMine now contests on appeal, to mean “an interactive
set of data displayed in rows and columns that can be
rotated and filtered to summarize or view the data in
different ways.” Id.
Claim 1 of the ’850 patent is illustrative and repro-
duced below in pertinent part:
1. A method comprising:
executing a customer relationship management
(CRM) software application on a computer, where-
in the CRM software application includes custom-
ized settings and local field names, and further
wherein the CRM software application includes a
CRM database that stores CRM data;
....
invoking a spreadsheet application from the re-
porting module installed within the CRM software
application using an application programming in-
terface (API) of the spreadsheet application to au-
tomatically generate an electronic worksheet
viewable by the spreadsheet software application,
4 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
wherein the automatically generating the elec-
tronic worksheet comprises directing the spread-
sheet application with the reporting module
installed within the CRM software application to
create a new workbook having the electronic
worksheet;
further invoking the spreadsheet application from
the reporting module installed within the CRM
software application using the API to automatical-
ly generate a pivot table within the electronic
worksheet according to the database query, where-
in the pivot table contains the CRM data from the
CRM database, and wherein invoking the spread-
sheet application includes communicating report
parameters from the reporting module installed
within the CRM software application to the
spreadsheet software application based on the
schema and data structures of the CRM database
and the customized settings including the local
field names within the CRM software application;
presenting the pivot table to a user with the
spreadsheet application in accordance with the
report parameters received from the reporting
module installed within the CRM software appli-
cation;
....
Id. at col. 7 l. 65 – col. 8 l. 67 (emphasis added).
Microsoft additionally sought a declaration that
claims 8 and 10 of the ’850 patent and claims 1, 2, and 3
of the ’518 patent are invalid for indefiniteness, which the
district court addressed in its claim construction order.
Claim Construction Order, 2016 WL 8292205, at *6–9.
The district court agreed with Microsoft, holding the
claims indefinite for improperly claiming two different
subject-matter classes. Id. at *9. Following the district
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 5
court’s construction of “pivot table,” the parties stipulated
to final judgments of noninfringement and invalidity for
indefiniteness, with MasterMine reserving the right to
appeal the district court’s claim construction order.
Pursuant to the stipulation, the district court entered
final judgment, and MasterMine now appeals. We have
jurisdiction under 28 U.S.C. § 1295(a)(1).
DISCUSSION
MasterMine challenges both the district court’s claim
construction and its indefiniteness determination. We
address these issues in turn.
I.
“The ultimate construction of the claim is a legal
question and, therefore, is reviewed de novo.” Info-Hold,
Inc. v. Applied Media Techs. Corp., 783 F.3d 1262, 1265
(Fed. Cir. 2015). We review a district court’s claim con-
struction based solely on intrinsic evidence de novo, while
we review subsidiary factual findings regarding extrinsic
evidence for clear error. Teva Pharm. USA, Inc. v.
Sandoz, Inc., 135 S. Ct. 831, 841 (2015).
Claim construction seeks to ascribe the “ordinary and
customary meaning” to claim terms as a person of ordi-
nary skill in the art would have understood them at the
time of invention. Phillips v. AWH Corp., 415 F.3d 1303,
1312–14 (Fed. Cir. 2005) (en banc) (citing Vitronics Corp.
v. Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
“[T]he claims themselves provide substantial guidance as
to the meaning of particular claim terms.” Id. at 1314. In
addition, “the person of ordinary skill in the art is deemed
to read the claim term not only in the context of the
particular claim in which the disputed term appears, but
in the context of the entire patent, including the specifica-
tion.” Id. at 1313. But “[w]hile we read claims in view of
the specification, of which they are a part, we do not read
limitations from the embodiments in the specification into
6 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
the claims.” Hill-Rom Servs., Inc. v. Stryker Corp.,
755 F.3d 1367, 1371 (Fed. Cir. 2014).
MasterMine argues that the district court improperly
construed the term “pivot table,” which it proposes should
be construed as a “computer software object [or structure]
defining an interactive table that can show the same data
from a list or a database in more than one arrangement.”
Appellant Br. 19 (alteration in original) (quoting
J.A. 1338). In other words, MasterMine contends that the
district court’s construction is incorrect because it ex-
cludes tables that do not display data. According to
MasterMine, its proposed construction is consistent with
the patents’ specification and “fits easily when read into
the claims.” Id. We disagree.
First, the claim language supports the district court’s
construction. Each time the claims recite the generation
of a pivot table, they further recite within the same limi-
tation that the generated pivot table contains data or
presents data. For example, claim 1 of the ’850 patent
recites “automatically generat[ing] a pivot table within
the electronic worksheet according to the database query,
wherein the pivot table contains the CRM data from the
CRM database.” ’850 patent col. 8 ll. 44–47; see also id. at
col. 12 ll. 5–7 (“[W]herein the pivot table contains CRM
data from the CRM database and presents the CRM data
in accordance with the report parameters.”) (claim 12).
Additionally, claim 8 of the ’850 patent requires “the
spreadsheet software application generat[ing] the pivot
table within the electronic worksheet to present the CRM
data in accordance with the report parameters.” Id. at
col. 10 ll. 22–25; see also ’518 patent col. 8 ll. 51–52 (claim
1).
The patents’ identical specification further supports
the district court’s construction. For example, the ab-
stract explains the purpose of a pivot table: “[T]he report
is automatically generated to include a pivot table for
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 7
displaying the data.” ’850 patent, Abstract (emphasis
added). The specification further explains that multi-
dimensional analysis table 14, which “represents an
analytical function, commonly referred to as a pivot
table . . . allows the user to quickly and easily summa-
rize[] or view large amounts of CRM data.” Id. at col. 2
ll. 19–24 (emphasis added). The specification adds that,
“[a]fter table 14 is generated, the user can interact with
spreadsheet application 6 to manipulate table 14 in order
to analyze the captured CRM data and ‘mine’ the data for
important insights.” Id. at col. 3 ll. 3–10. Thus, the
specification explains that the purpose of pivot tables in
the context of the invention is to display data that can be
viewed, summarized, and manipulated by users, and such
user action is available upon the generation of the pivot
tables. This understanding comports with the district
court’s construction—tables containing data “that can be
rotated and filtered to summarize or view the data in
different ways.” Claim Construction Order,
2016 WL 8292205, at *2.
Finally, the prosecution history of the patents pro-
vides additional support for the district court’s construc-
tion. During prosecution of a related parent patent, 2 the
applicant, in an attempt to overcome prior art rejections,
distinguished a prior art reference, referred to as Conlon,
and emphasized that a pivot table is created when filled
with data:
2 We have often held that the meaning of claim
terms in one patent can be informed by statements made
during prosecution of other patents in the same family.
We have explained, for example, that “past and future
prosecution of related patents may be relevant to the
construction of a given claim term.” Teva Pharm. USA,
Inc. v. Sandoz, Inc., 789 F.3d 1335, 1343 n.5 (Fed. Cir.
2015).
8 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
Conlon describes a user interface for a spread-
sheet application that allows a user to drag and
drop fields to manually create a pivot table on a
spreadsheet. Conlon requires that the user inter-
acts with the spreadsheet application directly, and
that the user manually selects each of the fields.
J.A. 1500. We agree with the district court, which found
that this statement demonstrates a “represent[ation] to
the PTO that a pivot table is ‘create[d]’ when the user
selects fields by dragging and dropping them into the
spreadsheet—i.e., when the user populates the table.”
Claim Construction Order, 2016 WL 8292205, at *3. We
further agree with the district court, however, that this
statement is not “so clear as to show reasonable clarity
and deliberateness, and so unmistakable as to be unam-
biguous evidence of disclaimer.” Id. (quoting Dealertrack,
Inc. v. Huber, 674 F.3d 1315, 1322 (Fed. Cir. 2012)).
Nevertheless, this explanation presented by the inventor
during patent examination is relevant to claim construc-
tion, “for the role of claim construction is to ‘capture the
scope of the actual invention’ that is disclosed, described,
and patented.” Fenner Invs., Ltd. v. Cellco P’ship,
778 F.3d 1320, 1323 (Fed. Cir. 2015) (quoting Retractable
Techs., Inc. v. Becton, Dickinson & Co., 653 F.3d 1296,
1305 (Fed. Cir. 2011)). Thus, while this statement does
not amount to disclaimer, it does, at a minimum, further
support the district court’s construction.
MasterMine’s arguments in support of its contrary
claim construction are not compelling. MasterMine first
argues that the specification contains excerpts of comput-
er code that would generate a pivot table with an empty
data display area. See ’850 patent col. 5 ll. 1–39. This
code, however, does not support MasterMine’s construc-
tion on its face. As both parties conceded at the claim
construction hearing, the code provided in the specifica-
tion is not operable on its own. Indeed, MasterMine
emphasized that it “never suggested that this code is a
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 9
standalone application; it isn’t. This code is part of an
application.” J.A. 2151. Accordingly, it is unclear what
exactly would be created once this sample code was in-
cluded within the entirety of code sufficient to execute the
application. Neither party presented expert testimony on
this point.
MasterMine additionally argues that its proposed
construction properly accounts for the claims’ recitation of
additional steps that occur after a pivot table is generat-
ed. These steps include “presenting the pivot table to a
user,” ’850 patent col. 8 l. 55 (claim 1), and “format[ting]
the pivot table,” id. at col. 9 ll. 11–12 (claim 3). Master-
Mine contends that the district court’s construction ren-
ders these additional limitations superfluous, as
presentation to the user and formatting would be simul-
taneous implications of a table that must display data
upon generation. We disagree. MasterMine’s position
finds no support in the specification. Though the district
court’s construction requires that a pivot table be popu-
lated with data upon its generation, such population does
not prevent the table from being subsequently presented
to the user or formatted. These additional steps could be
independent of the table’s population of data—e.g., the
table could be displayed to the user and formatted after it
is created. Accordingly, the district court’s construction
does not render them superfluous.
In light of the claim language, specification, and
prosecution history, we conclude that the district court
properly construed “pivot table” to mean “an interactive
set of data displayed in rows and columns that can be
rotated and filtered to summarize or view the data in
different ways.”
II.
MasterMine also challenges the district court’s de-
termination that claims 8 and 10 of the ’850 patent and
claims 1, 2, and 3 of the ’518 patent are invalid for indefi-
10 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
niteness. Pursuant to 35 U.S.C. § 112, ¶ 2, a patent
specification must “conclude with one or more claims
particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his inven-
tion.” 3 The Supreme Court has held this definiteness
provision “to require that a patent’s claims, viewed in
light of the specification and prosecution history, inform
those skilled in the art about the scope of the invention
with reasonable certainty.” Nautilus, Inc. v. Biosig In-
struments, Inc., 134 S. Ct. 2120, 2129 (2014). “Indefinite-
ness is a question of law that we review de novo, subject
to a determination of underlying facts.” Akzo Nobel
Coatings, Inc. v. Dow Chem. Co., 811 F.3d 1334, 1343
(Fed. Cir. 2016) (internal citation omitted).
In IPXL Holdings, L.L.C. v. Amazon.com, Inc., a case
of first impression, we held that a single claim covering
both an apparatus and a method of use of that apparatus
is indefinite under section 112, paragraph 2. 430 F.3d
1377 (Fed. Cir. 2005). The concern underlying our hold-
ing in IPXL Holdings was that claiming both an appa-
ratus and method of using the apparatus within a single
claim can make it “unclear whether infringe-
ment . . . occurs when one creates a[n infringing] system,
or whether infringement occurs when the user actually
uses [the system in an infringing manner].” Ultimate-
Pointer, L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed.
Cir. 2016) (alteration in original) (quoting IPXL Holdings,
430 F.3d at 1384).
3 Because the ’850 and ’518 patents were filed be-
fore the adoption of the Leahy-Smith America Invents
Act, Pub. L. No. 112-29, § 4(e), 125 Stat. 284, 296–97
(2011), the pre-AIA version of § 112 governs. See AbbVie
Deutschland GmbH & Co., KG v. Janssen Biotech, Inc.,
759 F.3d 1285, 1290 n.3 (Fed. Cir. 2014).
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 11
Following IPXL Holdings, we have been called on to
review applications of this holding to numerous different
claims. As we have explained, while a claim directed to
both a method and an apparatus may be indefinite, “ap-
paratus claims are not necessarily indefinite for using
functional language.” Microprocessor Enhancement Corp.
v. Tex. Instruments Inc. (MEC), 520 F.3d 1367, 1375 (Fed.
Cir. 2008). “Indeed, functional language in a means-plus-
function format is explicitly authorized by statute,” and
“[f]unctional language may also be employed to limit the
claims without using the means-plus-function format.”
Id.
Here, the district court determined that claims 8 and
10 of the ’850 patent and claims 1, 2, and 3 of the
’518 patent are invalid for indefiniteness for introducing
method elements into system claims. We disagree. In our
view, these claims are simply apparatus claims with
proper functional language.
A review of our case law addressing this issue is in-
structive. For example, at issue in IPXL Holdings was
the following dependent claim 25:
The system of claim 2 [including an input means]
wherein the predicted transaction information
comprises both a transaction type and transaction
parameters associated with that transaction type,
and the user uses the input means to either change
the predicted transaction information or accept
the displayed transaction type and transaction
parameters.
430 F.3d at 1384 (alteration in original). We held that
this claim recites both the system of claim 2 and a method
for using that system because it is unclear whether in-
fringement of claim 25 occurs “when one creates a system
that allows the user to change the predicted transaction
information or accept the displayed transaction, or
whether infringement occurs when the user actually uses
12 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
the input means to change transaction information or
uses the input means to accept a displayed transaction.”
Id. Thus, we concluded that, “[b]ecause claim 25 recites
both a system and the method for using that system, it
does not apprise a person of ordinary skill in the art of its
scope, and it is invalid under section 112, paragraph 2.”
Id.
In In re Katz Interactive Call Processing Patent Litiga-
tion, the claims at issue covered a “system with an ‘inter-
face means for providing automated voice messages . . . to
certain of said individual callers, wherein said certain of
said individual callers digitally enter data.’” 639 F.3d
1303, 1318 (Fed. Cir. 2011) (emphasis added). While Katz
tried to distinguish IPXL Holdings on the ground that the
term “wherein” does not signify a method step but instead
defines a functional capability, we disagreed, holding
Katz’s claims indefinite as they “create confusion as to
when direct infringement occurs because they are directed
both to systems and to actions performed by ‘individual
callers.’” Id.
We also applied this doctrine in Rembrandt Data
Techs., LP v. AOL, LLC, where, unlike the claims in IPXL
Holdings and Katz, the claims at issue did not claim user
action. 641 F.3d 1331 (Fed. Cir. 2011). At issue in Rem-
brandt was the following independent claim 3:
3. A data transmitting device for transmitting
signals corresponding to an incoming stream of
bits, comprising:
first buffer means for partitioning said stream in-
to frames of unequal number of bits and for sepa-
rating the bits of each frame into a first group and
a second group of bits;
fractional encoding means for receiving the first
group of bits of each frame and performing frac-
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 13
tional encoding to generate a group of fractionally
encoded bits;
second buffer means for combining said second
group of bits with said group of fractionally encod-
ed bits to form frames of equal number of bits;
trellis encoding means for trellis encoding the
frames from said second buffer means; and
transmitting the trellis encoded frames.
Id. at 1339 (emphasis added). We held this claim invalid
for indefiniteness. We explained that “[t]he first four
elements of claim 3 of the ’236 patent recite apparatus
elements: buffer means, fractional encoding means,
second buffer means, and trellis encoding means,” where-
as “[t]he final element is a method: ‘transmitting the
trellis encoded frames.’” Id.
Conversely, in HTC Corp. v. IPCom GmbH & Co., KG,
we held apparatus claims not invalid for indefiniteness
despite their use of functional language. 667 F.3d 1270
(Fed. Cir. 2012). At issue in HTC was, inter alia, the
following independent claim 1:
A mobile station for use with a network including
a first base station and a second base station that
achieves a handover from the first base station to
the second base station by:
storing link data for a link in a first base station,
holding in reserve for the link resources of the
first base station, and
when the link is to be handed over to the second
base station:
initially maintaining a storage of the link data in
the first base station,
initially causing the resources of the first base
station to remain held in reserve, and
14 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
at a later timepoint determined by a fixed period
of time predefined at a beginning of the handover,
deleting the link data from the first base station
and freeing up the resources of the first base sta-
tion, the mobile station comprising:
an arrangement for reactivating the link with the
first base station if the handover is unsuccessful.
Id. at 1273 (first six emphases added). We held that,
unlike the IPXL Holdings claim, this claim does not
“recite a mobile station and then have the mobile station
perform the six enumerated functions,” but rather, this
claim “merely establish[es] those functions as the under-
lying network environment in which the mobile station
operates.” Id. at 1277. Accordingly, we held that the
“unconventional format” of this claim did not preclude it
from being definite because it makes clear “that infringe-
ment occurs when one makes, uses, offers to sell, or sells
the claimed apparatus: the mobile station—which must
be used in a particular network environment.” Id.
Similarly, at issue in MEC was the following inde-
pendent claim 7:
7. A pipelined processor for executing instructions
comprising:
a conditional execution decision logic pipeline
stage . . . ;
....
the conditional execution decision logic pipeline
stage performing a boolean algebraic evaluation of
the condition code and said conditional execution
specifier and producing an enable-write with at
least two states, true and false;
said enable-write when true enabling and when
false disabling the writing of instruction results at
said write pipeline stage;
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 15
....
the conditional execution decision logic pipeline
stage, when specified by the conditional execution
specifier, determining the enable-write using the
boolean algebraic evaluation;
....
520 F.3d at 1371–72 (emphases added). We concluded
that this claim “is clearly limited to a pipelined processor
possessing the recited structure and capable of perform-
ing the recited functions, and is thus not indefinite under
IPXL Holdings.” Id. at 1375.
Most recently, in UltimatePointer, the claims at issue
claimed “‘a handheld device including: an image sensor,
said image sensor generating data’ and other similar
‘generating data’ limitations.” UltimatePointer, 816 F.3d
at 826 (quoting UltimatePointer, LLC v. Nintendo Co.,
73 F. Supp. 3d 1305, 1308 (W.D. Wash. 2014)). We held
that these claims were unlike those in IPXL Holdings and
Katz because they “make clear that the ‘generating data’
limitation reflects the capability of that structure rather
than the activities of the user,” and “do not reflect an
attempt to claim both an apparatus and a method, but
instead claim an apparatus with particular capabilities.”
Id. at 827–28.
The claims at issue here are similar to those in MEC,
HTC, and UltimatePointer. The district court focused,
inter alia, on claim 8 of the ’850 patent, which discloses in
pertinent part, “[a] system comprising”:
....
a reporting module installed within the CRM
software application . . . ;
....
16 MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP.
wherein the reporting module installed within the
CRM software application presents a set of user-
selectable database fields as a function of the se-
lected report template, receives from the user a se-
lection of one or more of the user-selectable
database fields, and generates a database query as
a function of the user selected database fields;
....
’850 patent col. 9 ll. 39–67 (emphases added).
Though claim 8 includes active verbs—presents,
receives, and generates—these verbs represent permissi-
ble functional language used to describe capabilities of the
“reporting module.” Like the claims in MEC, HTC, and
UltimatePointer, the claims at issue here merely claim
that the system “possess[es] the recited structure [which
is] capable of performing the recited functions.” MEC,
520 F.3d at 1375.
These claims are also distinguishable from those at
issue in IPXL Holdings and Katz, as the claims here do
not claim activities performed by the user. While these
claims make reference to user selection, they do not
explicitly claim the user’s act of selection, but rather,
claim the system’s capability to receive and respond to
user selection. The limitations at issue here (“receiv[ing]
from the user a selection” and “generat[ing] a database
query as a function of the user selected database fields”)
focus on the capabilities of the system, whereas the claims
in IPXL Holdings (“the user uses the input means”) and
Katz (“said individual callers digitally enter data”) focus
on specific actions performed by the user. Moreover,
unlike the claims in Rembrandt, the functional language
here does not appear in isolation, but rather, is specifical-
ly tied to structure: the reporting module installed within
the CRM software application.
MASTERMINE SOFTWARE, INC. v. MICROSOFT CORP. 17
As noted above, this Court in IPXL Holdings was con-
cerned that claiming both an apparatus and a method of
using the apparatus within a single claim can make it
“unclear whether infringement . . . occurs when one
creates a[n infringing] system, or whether infringement
occurs when the user actually uses [the system in an
infringing manner].” UltimatePointer, 816 F.3d at 826
(alteration in original) (quoting IPXL Holdings, 430 F.3d
at 1384). The claims at issue here do not pose this prob-
lem. Because the claims merely use permissible function-
al language to describe the capabilities of the claimed
system, it is clear that infringement occurs when one
makes, uses, offers to sell, or sells the claimed system.
Accordingly, because these claims inform those skilled in
the art about the scope of the invention with reasonable
certainty, we reverse the district court’s determination
that claims 8 and 10 of the ’850 patent and claims 1, 2,
and 3 of the ’518 patent are invalid as indefinite.
CONCLUSION
We have considered MasterMine’s remaining argu-
ments and find them unpersuasive. Accordingly, we
affirm the district court’s construction of “pivot table,”
reverse the district court’s indefiniteness determination,
and remand to the district court for further proceedings
consistent with this opinion.
AFFIRMED-IN-PART, REVERSED-IN-PART, AND
REMANDED
COSTS
No costs.