IP News

Federal Circuit Allows Recitation of
System Limitations in Method Claims

In Microprocessor Enhancement Corp. v. Texas Instruments Corp., No. 2007-1249, -1268, decided April 1, 2008, the Federal Circuit held that method claims are not necessarily indefinite where they recite features of the apparatus in which a claimed method is practiced. Citing its earlier decision in IPXL Holdings LLC v. Amazon.com, Inc., 430 F.3d 1377 (Fed. Cir. 2005) and William Shakespeare, the Federal Circuit held that while 'no single claim may cover more than one subject matter class,' any 'seeming preamble within a preamble structure,' though it may be 'unconventional,' must have 'the conclusiveness with which King Claudius's guilt is established by his reaction to Hamlet's play within a play' in its effect on definiteness if it is to render a claim invalid. The Microprocessor court distinguished the IPXL Holdings decision, stating that it 'was based on the lack of clarity as to when the mixed subject matter claim would be infringed,' which did not exist in the instant claims which were 'clearly limited to practicing the claimed method in a pipelined processor possessing the requisite structure.'

In Microprocessor, the Federal Circuit interpreted the structure of challenged claim 1 to be described as 'A method of executing instructions in a pipeline comprising: [structural limitations of the pipeline processor]; the method further comprising: [method steps implemented in the pipelined processor].' While the defendant argued that the claim therefore combined subject matter pertaining to both a method and a system in a manner impermissible under IPXL Holdings, the Federal Circuit held that since there was no lack of clarity as to what subject matter was claimed, claim 1 was 'no different' from permissible '[m]ethod claim preambles [which] often recite the physical structures of a system in which the claimed method is practiced.'

Similarly, the Federal Circuit held that 'functional language' may be included in an apparatus claim, even outside the statutorily authorized means-plus-function format, without rendering that claim indefinite under IPXL Holdings. While it acknowledged that under Halliburton Energy Servs. v. M-I LLC, 514 F.3d 1244 (Fed. Cir. 2008), a claim may 'fail to provide a clear-cut indication of the scope of subject matter embraced by the claim and thus be indefinite' (internal citations omitted), it found that the challenged claim 7 was not indefinite because it was 'clearly limited to a pipelined processor possessing the recited structure and capable of performing the recited functions.'

Additionally, the court held that the claim term 'condition code' used in both apparatus and method claims should be interpreted differently in each context in a manner which would not render either claim indefinite. The Federal Circuit remarked that 'the claims' nonsensical reading under a uniform construction of 'condition code' is indicative of the ease of determining the appropriate meaning of each use of the term from its context.'

In Greenberg v. Nat'l Geographic Soc'y, No. 05-16964 (June 30, 2008), the U.S. Court of Appeals for the Eleventh Circuit held en banc that it was within National Geographic's privilege under the Copyright Act to reproduce past issues of its magazine on CD-ROM where they 'faithfully preserve the original context of National Geographic's print issues,' and that addition of search functions, indices, a zoom function, and an introductory sequence 'do not destroy the original context of the collective work.'

Photographer Greenberg sued National Geographic for copyright infringement, alleging that reproduction of its past issues, which included Greenberg's photographs among many others, constituted a revision of the contribution itself or inclusion of that work in different collective work without the author's consent. Following an award of damages to Greenberg, National Geographic appealed, arguing that the Supreme Court's intervening decision in New York Times Co. v. Tasini, 533 U.S. 483 (2001) mandated reversal. Following an appellate decision in favor of National Geographic, the Eleventh Circuit vacated its panel opinion and granted rehearing en banc.

Under Tasini, 'a magazine publisher is privileged to reproduce or distribute an article ' contributed by a freelancer' without consent, 'only 'as part of' ' (a) 'that collective work' to which the author contributed her work; (b) 'any revision of that collective work,' or (c) 'any later collective work in the same series” (internal citations omitted). Greenberg argued that 'The Complete National Geographic' CD-ROM produced in 1997 and containing monthly issues of the magazine originally published between 1988 and 1996 should be considered a 'new collective work' not entitled to that privilege.

To determine whether the CD-ROM was a 'new collective work' and therefore outside the privileges created by the Copyright Act, the Eleventh Circuit followed the Supreme Court's analytical framework in Tasini, focusing 'on whether the articles were removed from their original context and now isolated in an entirely different context.' It drew a parallel to the microform reproductions considered in Tasini, which are within the privilege claimed by National Geographic, observing that reproductions of print issues on National Geographic's CD-ROM used 'the identical selection, coordination, and arrangement of the underlying individual contributions as used in the collective works,' and that such 'image-based reproduction of the Magazine is like microform ' exactly as they are presented in the print version.' The Eleventh Circuit further observed that '[a]ggregation [of multiple issues] is permissible if the original context of the individual contribution is preserved.'

Finding that 'Greenberg's photographs do not appear disconnected from their original context' on the CD-ROM, but are instead 'firmly positioned within their original context,' the Eleventh Circuit rejected Greenberg's arguments that new elements added in the CD-ROM render it a 'new collective work.' It remarked that '[i]f simply adding a new element to a collective work, such as an index, table of contents or a new foreword, creates a 'new collective work' outside the purview of ' 201(c) [of the Copyright Act], then the 'revision' prong is effectively nullified.' The Eleventh Circuit reversed and remanded the award of damages to Greenberg, holding that National Geographic's CD-ROM was within the realm of its privilege, and that conversion or ”revision' of a collective work ' from print to digital form ' does not create a different balance of copyright protection ' because copyright protection is media neutral.'

Federal Circuit Allows Recitation of
System Limitations in Method Claims

In Microprocessor Enhancement Corp. v. Texas Instruments Corp., No. 2007-1249, -1268, decided April 1, 2008, the Federal Circuit held that method claims are not necessarily indefinite where they recite features of the apparatus in which a claimed method is practiced. Citing its earlier decision in IPXL Holdings LLC v. Amazon.com, Inc. , 430 F.3d 1377 (Fed. Cir. 2005) and William Shakespeare, the Federal Circuit held that while 'no single claim may cover more than one subject matter class,' any 'seeming preamble within a preamble structure,' though it may be 'unconventional,' must have 'the conclusiveness with which King Claudius's guilt is established by his reaction to Hamlet's play within a play' in its effect on definiteness if it is to render a claim invalid. The Microprocessor court distinguished the IPXL Holdings decision, stating that it 'was based on the lack of clarity as to when the mixed subject matter claim would be infringed,' which did not exist in the instant claims which were 'clearly limited to practicing the claimed method in a pipelined processor possessing the requisite structure.'

In Microprocessor, the Federal Circuit interpreted the structure of challenged claim 1 to be described as 'A method of executing instructions in a pipeline comprising: [structural limitations of the pipeline processor]; the method further comprising: [method steps implemented in the pipelined processor].' While the defendant argued that the claim therefore combined subject matter pertaining to both a method and a system in a manner impermissible under IPXL Holdings, the Federal Circuit held that since there was no lack of clarity as to what subject matter was claimed, claim 1 was 'no different' from permissible '[m]ethod claim preambles [which] often recite the physical structures of a system in which the claimed method is practiced.'

Similarly, the Federal Circuit held that 'functional language' may be included in an apparatus claim, even outside the statutorily authorized means-plus-function format, without rendering that claim indefinite under IPXL Holdings. While it acknowledged that under Halliburton Energy Servs. v. M-I LLC , 514 F.3d 1244 (Fed. Cir. 2008), a claim may 'fail to provide a clear-cut indication of the scope of subject matter embraced by the claim and thus be indefinite' (internal citations omitted), it found that the challenged claim 7 was not indefinite because it was 'clearly limited to a pipelined processor possessing the recited structure and capable of performing the recited functions.'

Additionally, the court held that the claim term 'condition code' used in both apparatus and method claims should be interpreted differently in each context in a manner which would not render either claim indefinite. The Federal Circuit remarked that 'the claims' nonsensical reading under a uniform construction of 'condition code' is indicative of the ease of determining the appropriate meaning of each use of the term from its context.'

In Greenberg v. Nat'l Geographic Soc'y, No. 05-16964 (June 30, 2008), the U.S. Court of Appeals for the Eleventh Circuit held en banc that it was within National Geographic's privilege under the Copyright Act to reproduce past issues of its magazine on CD-ROM where they 'faithfully preserve the original context of National Geographic's print issues,' and that addition of search functions, indices, a zoom function, and an introductory sequence 'do not destroy the original context of the collective work.'

Photographer Greenberg sued National Geographic for copyright infringement, alleging that reproduction of its past issues, which included Greenberg's photographs among many others, constituted a revision of the contribution itself or inclusion of that work in different collective work without the author's consent. Following an award of damages to Greenberg, National Geographic appealed, arguing that the Supreme Court's intervening decision in New York Times Co. v. Tasini , 533 U.S. 483 (2001) mandated reversal. Following an appellate decision in favor of National Geographic, the Eleventh Circuit vacated its panel opinion and granted rehearing en banc.

Under Tasini, 'a magazine publisher is privileged to reproduce or distribute an article ' contributed by a freelancer' without consent, 'only 'as part of' ' (a) 'that collective work' to which the author contributed her work; (b) 'any revision of that collective work,' or (c) 'any later collective work in the same series” (internal citations omitted). Greenberg argued that 'The Complete National Geographic' CD-ROM produced in 1997 and containing monthly issues of the magazine originally published between 1988 and 1996 should be considered a 'new collective work' not entitled to that privilege.

To determine whether the CD-ROM was a 'new collective work' and therefore outside the privileges created by the Copyright Act, the Eleventh Circuit followed the Supreme Court's analytical framework in Tasini, focusing 'on whether the articles were removed from their original context and now isolated in an entirely different context.' It drew a parallel to the microform reproductions considered in Tasini, which are within the privilege claimed by National Geographic, observing that reproductions of print issues on National Geographic's CD-ROM used 'the identical selection, coordination, and arrangement of the underlying individual contributions as used in the collective works,' and that such 'image-based reproduction of the Magazine is like microform ' exactly as they are presented in the print version.' The Eleventh Circuit further observed that '[a]ggregation [of multiple issues] is permissible if the original context of the individual contribution is preserved.'

Finding that 'Greenberg's photographs do not appear disconnected from their original context' on the CD-ROM, but are instead 'firmly positioned within their original context,' the Eleventh Circuit rejected Greenberg's arguments that new elements added in the CD-ROM render it a 'new collective work.' It remarked that '[i]f simply adding a new element to a collective work, such as an index, table of contents or a new foreword, creates a 'new collective work' outside the purview of ' 201(c) [of the Copyright Act], then the 'revision' prong is effectively nullified.' The Eleventh Circuit reversed and remanded the award of damages to Greenberg, holding that National Geographic's CD-ROM was within the realm of its privilege, and that conversion or ”revision' of a collective work ' from print to digital form ' does not create a different balance of copyright protection ' because copyright protection is media neutral.'