Zak v. Facebook, Inc.

Filing 97

ORDER Construing Disputed Claim Limitations. Signed by District Judge Terrence G. Berg. (AChu)

UNITED STATES DISTRICT COURT
EASTERN DISTRICT OF MICHIGAN
SOUTHERN DIVSION
4:15-cv-13437

BRUCE ZAK,
Plaintiff,
v.

HON. TERRENCE G. BERG

FACEBOOK, INC.,
Defendant.

ORDER CONSTRUING
DISPUTED CLAIM
LIMITATIONS

This is a patent-infringement case. Plaintiff Bruce Zak alleges that
Defendant Facebook, Inc. (“Facebook”) has infringed U.S. Patent No.
9,141,720, named “System and Method for Managing Content on a
Network Interface” (the “’720 Patent”). In accordance with this Court’s
standard procedures, the parties identified those claim limitations within
the ’720 Patent they believe are material to the infringement and validity
issues, and which the Court should therefore construe. After working
with the Court’s technical advisor, the parties reached agreement on the
construction of some of the claim limitations that were previously
disputed, and they have filed a corresponding stipulation. ECF No. 70.
There are four claim limitations in the ’720 Patent that remain in dispute
and that the Court will need to construe consistent with Markman v.
Westview Instruments, 517 U.S. 370 (1996).

PROCEDURAL HISTORY
Zak filed this case in 2015 alleging that Facebook infringed two
patents he holds: (1) U.S. Patent No. 8,713,134; and (2) U.S. Patent No.
9,141,720 (the “’720 Patent”). ECF No. 1. On August 16, 2018, Zak agreed
to dismiss his claim regarding the first patent, No. 8,713,134, with
prejudice. ECF No. 31. His second claim alleging infringement of the ’720
Patent remains pending. Id.
In 2016, after the parties filed opening briefs on claim construction,
Facebook filed four separate Petitions for Inter Partes Review (“IPR”) of
the ’720 Patent with the United States Patent and Trademark Office
(“USPTO”) challenging the validity of the ’720 Patent. See 35 U.S.C. § 311
(outlining IPR procedure). The parties then filed a joint motion to stay
this case pending the outcome of the IPRs, which this Court granted on
November 9, 2016. ECF Nos. 42, 43. The United States Patent Trial and
Appeal Board (“PTAB”) issued decisions denying institution of all four of
Facebook’s IPRs on April 4, 2017. ECF No. 46. In response, Facebook filed
requests for rehearing of the PTAB’s decisions, which the PTAB denied
on October 31, 2017 (IPRs 2017-00002 and 2017-00003) and March 28,
2018 (IPRs 2017-00004 and IPR 2017-00005). Id. The Court then lifted
the stay upon a joint motion by the parties and permitted supplemental
briefing outlining additional arguments on claim construction. ECF Nos.
47, 49, 53.

2

After discussion between the parties facilitated by the Court’s
Technical Advisor, Christopher G. Darrow, the parties reached a
consensus on some of the disputed claim limitations. That consensus is
reflected in their joint stipulation of October 12, 2018. ECF No. 70. Four
claim limitations now remain for this Court to construe. The Court has
considered the parties’ oral arguments on the disputed claim limitations,
as well as supplemental briefing on a modified construction raised by
Facebook during the October 17, 2018 hearing. See ECF Nos. 71, 72.
Though the parties attended a full-day facilitation on April 12, 2019 and
have engaged in subsequent settlement discussions, those efforts have
not yet borne fruit.
BACKGROUND
The ’720 Patent is directed to a computer system for managing web
site content. More specifically, the ’720 Patent is directed to a system for
enabling users, without third-party assistance, to post content to a web
site and to control which other users can view the posted content. The
system includes at least two “configurable applications,” which are
comprised of one or more units of content, such as text, graphics, sounds,
documents, and multi-media content, that are displayable to users of the
web site. One of the configurable applications is a “biography
application,” which displays biographical information about a “user” of
the web site. The system enables users of the web site to manage
“business rules” that control the interaction of other users with certain
3

web pages of the web site. In some embodiments, this is done through an
“administrative portal.”
The system further includes generating at least one “configurable
link” or “application link” that points to a configurable application. The
“configurable link” is configurable by a user of the web site. The user
configures a business rule that applies profiles of other users to select
which content stored on the computer can be viewed by the other users
of the web site. The computer then generates the configurable link based
on this user-configured business rule. In this way, the system provides a
way to implement privacy-related business rules in a web site
environment.
The parties agree that Claim 2 of the ’720 Patent is representative
of the claims asserted in this case. Claim 2 states:
2. A system, including a computer and a web site,
for managing content displayable on the web site
to multiple users of the system who have profiles
stored on the system, comprising:
at least a first configurable application and a
second configurable application, wherein each of
the first and second configurable applications
includes content that is stored on the computer
and that is displayable to the users of the web site,
and wherein one of the applications is a biography
application that is managed by the computer and
that displays biographical information that is
received from and that is about one of the users of
the system;
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wherein at least one of the configurable
applications is generated by the computer at least
in part based on inputs received from multiple
users of the system, the inputs including at least
one of text, graphics, sounds, documents, and
multi-media content;
an administrator portal through which users of the
system are permitted to act in the role of an
administrator of certain web pages, wherein a user
acting in the role of an administrator may manage
business rules that utilize profiles of the users of
the system to control interaction of the users with
the certain web pages, wherein each user of the
system is permitted to act in the role of an
administrator at least with respect to a subset of
web pages on the web site; and
at least one configurable link on the web site that
points to at least one of the plurality of
configurable applications,
wherein the at least one configurable link is
generated by the computer based at least in part
on a profile attributed to at least one user of the
system and at least one rule that is configurable
by a user acting in the role of an administrator and
which applies user profiles to select what content
stored on the computer can be viewed by which of
the users of the system.
DISCUSSION
Determining if there is an infringement of a patent is a two-step
inquiry. “[A] court must first construe disputed claim terms, and then
compare the properly construed claims to the accused device.” Nazomi
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Comm., Inc. v. Arm Holdings, PLC, 403 F.3d 1364, 1367–68 (Fed. Cir.
2005) (citation omitted). See Markman v. Westview Instruments, Inc., 52
F.3d 967, 976 (Fed. Cir. 1995) (en banc). Because claim construction will
in turn inform the factfinder’s assessment of the patent’s validity, and
whether the patent has been infringed, construction of key claim terms
is critical. The judge, not the jury, is responsible for determining the
meaning of the disputed claim limitations. See Markman, 517 U.S. at
372, 391; Info-Hold, Inc. v. Applied Media Techs. Corp., 783 F.3d 1262,
1265 (Fed. Cir. 2015) (Such “[s]ubsidiary factual determinations based
on extrinsic evidence are reviewed for clear error.”) (citing Teva Pharms.
USA, Inc. v. Sandoz, Inc., 135 S. Ct. 831, 841 (2015)). The Court’s claim
construction ruling will later form the basis for jury instructions.
As explained by the Federal Circuit, “[t]he construction of claims is
simply a way of elaborating the normally terse claim language[ ] in order
to understand and explain, but not to change, the scope of the claims.”
Embrex, Inc. v. Serv. Eng’g Corp., 216 F.3d 1343, 1347 (Fed. Cir. 2000)
(quoting Scripps Clinic & Research Found. v. Genentech, Inc., 927 F.2d
1565, 1580 (Fed. Cir. 1991)). Claim construction involves determining
“how a person of ordinary skill in the art would understand a claim term
‘in the context of the entire patent, including the specification.’” Tr.’s of
Columbia Univ. v. Symantec Corp., 811 F.3d 1359, 1362 (Fed. Cir. 2016)
(quoting Phillips v. AWH Corp., 415 F.3d 1303, 1313 (Fed. Cir. 2005) (en
banc)).
6

The Court may utilize numerous sources for guidance in
determining the proper construction of a claim. Vitronics Corp. v.
Conceptronic, Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996). It is well-settled
that courts should begin the claim-construction analysis by examining
the patent itself, including the language of the claims, the specification,
and, if relevant, the prosecution history. Id. at 1582; Tr.’s of Columbia
Univ., 811 F.3d at 1362–63. The specification is “the single best guide to
the meaning of a disputed term” and therefore “the primary basis for
construing the claims.” Tr.’s of Columbia Univ., 811 F.3d at 1362
(internal quotations omitted) (quoting Vitronics Corp., 90 F.3d at 1582
and Phillips, 415 F.3d at 1315). Courts may also examine extrinsic
evidence to construct claims limitations, including relevant dictionary
definitions, “so long as the dictionary definition does not contradict any
definition found in or ascertained by a reading of the patent documents.”
Phillips, 415 F.3d at 1322–23 (quoting Vitronics Corp., 90 F.3d at 1584
n.6). Extrinsic evidence in the form of expert testimony may likewise
prove helpful to ensure that the court’s construction of technical aspects
of the patent is “consistent with that of a person of skill in the art, or to
establish that a particular term in a patent or the prior art has a
particular meaning in the pertinent field.” Phillips, 415 F.3d at 1318
(citing Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1308–
09 (Fed. Cir. 1999); Key Pharms. v. Hercon Labs. Corp., 161 F.3d 709, 716
(Fed. Cir. 1998)). But courts should discount expert testimony that is
7

conclusory or unsupported, or that is “clearly at odds with the claim
construction mandated by the claims themselves, the written description,
and the prosecution history, in other words, with the written record of
the patent.” Phillips, 415 F.3d at 1318 (quoting Key Pharms., 161 F.3d at
716).
Courts may not use the accused product or device as a form of
extrinsic evidence to supply limitations for the patent claim. Wilson
Sporting Goods Co. v. Hillerich & Bradsby Co., 442 F.3d 1322, 1326–1327
(Fed. Cir. 2006). Such a practice would permit a court to tailor claim
construction to fit the dimensions of the accused product or process, and
thereby “to reach a preconceived judgment of infringement or
noninfringement.” Id. at 1331. Courts may, however, look to the accused
product or process as context to inform the parameters and scope of the
infringement analysis, including claim construction. Id. For example, in
Wilson Sporting Goods Company. v. Hillerich & Bradsby Company, the
Federal Circuit struggled to understand how the term “rigid” fit into the
claim construction at issue and found it appropriate to examine “the full
infringement context, including some record evidence about the accused
devices,” to inform claim construction. 442 F.3d at 1331. “While a trial
court should certainly not prejudge the ultimate infringement analysis
by construing claims with an aim to include or exclude an accused
product or process, knowledge of that product or process provides
meaningful context for the first step of the infringement analysis, claim
8

construction.” Id. at 1326–1327. The Federal Circuit has held that
without “the vital contextual knowledge of the accused products,” a
court’s claim construction decision “takes on the attributes of something
akin to an advisory opinion.” Lava Trading, Inc. v. Sonic Trading Mgmt.,
LLC, 445 F.3d 1348, 1350 (Fed. Cir. 2006).
The “prosecution history” of a patent is the complete public record
of USPTO proceedings concerning it. Phillips, 415 F.3d at 1317. Like the
specification, a patent’s prosecution history is evidence of how the
USPTO and the inventor understood the patent at issue. Id. Because the
prosecution history “represents an ongoing negotiation” between the
USPTO and the applicant “rather than the final product of that
negotiation, it often lacks the clarity of the specification and thus is less
useful for claim construction purposes.” Id. (citing Inverness Med. Switz.
GmbH v. Warner Lambert Co., 309 F.3d 1373, 1380–82 (Fed. Cir. 2002)).
Prosecution history may nonetheless offer insight into the meaning of
claim language by illustrating how the inventor understood the nature of
the invention and whether the inventor narrowed the scope of the
invention in the course of prosecution. Id. In practice, the prosecution
history of a patent frequently becomes relevant where, during
prosecution, the inventor, in response to an official rejection by the
USPTO, sets forth a definition or explanation regarding what the claim
is intended to cover. Id. Such a definition or explanation may or may not
be accompanied by a narrowing amendment to the claims. Where the
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patentee gives such a definition or explanation, the definition or
explanation limits the scope of the claim, preventing the patentee from
later recapturing what was previously surrendered. See Chimie v. PPG
Indus., Inc., 402 F.3d 1371, 1384 (Fed. Cir. 2005) (“The purpose of
consulting the prosecution history in construing a claim is to ‘exclude any
interpretation that was disclaimed during prosecution.’”) (quoting ZMI
Corp. v. Cardiac Resuscitator Corp., 844 F.2d 1576, 1580 (Fed. Cir.
1988)).
The Federal Circuit, in Omega Engineering, Inc. v. Raytek
Corporation, 334 F.3d 1314, 1323 (Fed. Cir. 2003), explained that it
would refer to narrowing amendments in a patent’s prosecution history
as the “doctrine of prosecution disclaimer.” Under this doctrine, if an
inventor unequivocally disavows a broader plain and ordinary meaning
of claim language during prosecution in favor of a narrower meaning to
obtain or confirm a patent, courts should construe the claim language to
have the narrower meaning. Id. at 1325. Statements made by a patent
owner during an IPR proceeding may also fit within the doctrine of
prosecution disclaimer. In a recent case, Aylus Networks, Inc. v. Apple
Inc., 856 F.3d 1353, 1362 (Fed. Cir. 2017), the Federal Circuit held that
such statements made during the IPR process, “whether before or after
an institution decision, can be considered for claim construction and
relied upon to support a finding of prosecution disclaimer.” See also
Signal IP, Inc. v. Fiat U.S.A., Inc., No. 14-cv-13864, 2016 WL 5027595,
10

at *16 (E.D. Mich. 2016) (finding that statements made during IPR
proceedings disavowed the plain and ordinary meaning of the word
“switch” to mean “magnetic switch.”). Critically, prosecution statements
that are vague or ambiguous do not qualify as a disavowal of claim scope.
Omega Engineering Inc., 334 F.3d at 1324. Such disavowing statements
must be both clear and deliberate. Id.
Consistent with the foregoing, the parties have requested that the
Court construe four claim limitations or terms in the ’720 patent. The
Court will address each disputed claim limitation below.
A.
Claim
Term

“Configurable Link” and “Application Link"

Facebook’s
Proposed
Constructions
“configurable “A mechanism by
link” /
which a user of a
“application web site activates
link”
an application,
where the
mechanism can
be modified or
configured by the
user as permitted
by any relevant
business rules, by
acting on the
mechanism itself
and not an icon,
shortcut or other
visual
representation

Zak’s Proposed
Constructions

Court’s
Constructions

“A mechanism
by which a user
of a web site
activates an
application,
where the
mechanism can
be modified or
configured by the
user as
permitted by any
relevant
business rules.”

A mechanism by
which a user of a
web site
activates an
application,
where the
mechanism can
be modified or
configured by
the user as
permitted by any
relevant
business rules.

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associated with
it.”
The parties first request that the Court construe the claim
limitations “configurable link” and “application link.” They agree that the
Court’s construction of both limitations should contain the following
language: a “mechanism by which a user of a web site activates an
application, where the mechanism can be modified or configured by the
user as permitted by any relevant business rule.” ECF No. 71,
PageID.1841 n.1 (Zak’s Suppl. Br.); ECF No. 49, PageID.1147 (Facebook’s
Suppl. Br.). Facebook originally sought to add the following two
sentences to the end of the agreed-upon language: “Additionally, to
activate the application, the user must act directly on the actual
mechanism and not on a visual representation associated with the
mechanism, such as an icon or shortcut. The mechanism itself must be
configurable (as opposed to the application to which the mechanism
refers).” ECF No. 49, PageID.1147. But at oral argument Facebook
proposed a slightly modified alternative construction:
A mechanism by which a user of a web site
activates an application, where the mechanism
can be modified or configured by the user as
permitted by any relevant business rules, by
acting on the mechanism itself and not an icon,
shortcut or other visual representation associated
with it.
The parties have stipulated to the first (non-underlined) portion of
Facebook’s construction, which comes directly from the ’720 Patent
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specification. ’720 Pat. col. 5 ll. 53-64. Facebook, however, urges that the
additional underlined phrase is required under the doctrine of
prosecution disclaimer.
According to Facebook, Zak represented in IPR proceedings that a
“configurable link” can only be activated by a user clicking on the
alphanumeric link itself, and not on an icon, shortcut or other visual
representation that covers the link for aesthetic purposes. Though Zak
denies making any such representation, Facebook says Zak’s statements
necessarily limited the scope of these disputed claims because he
acknowledged “it is not enough for a user to act indirectly on a link by
using an associated visual representation.” ECF No. 49, PageID.1149. In
support of its proposed claim construction, Facebook cited the following
statements made by Zak during IPR proceedings:
 “Facebook’s argument that Boyce discloses or teaches a
‘configurable link’/‘application link’ hinges on a false premise
that a graphical icon or shortcut is a ‘link.’ It is not . . . . Rather
an icon or shortcut is simply a graphical object that may be
associated with a link.”
 “[Boyce’s] clickable icons or shortcuts are associated with – but
separate and distinct from – underlying links to the various
applications . . . .”
 “. . . graphical icons or shortcuts are not ‘links’ at all . . . .”
 “The Clickable Icons or Shortcuts in Boyce Are Not ‘Links’”
 “A PHOSITA understands that graphical icons or shortcuts are
simply not mechanisms that ‘point to’ and ‘activate’ configurable
applications. Rather, they are merely images that are associated
13

with – but separate and distinct from – the underlying links that
actually point to and are used to active the applications.”
ECF No. 72, PageID.1849 (Facebook’s Resp. to Zak’s Suppl. Cl. Constr.
Br. 1) (citing ECF No. 49-1, PageID.1167, 1172–73 (Zak’s Prelim. IPR
Resp.)). Under the doctrine of prosecution disclaimer, Facebook averred,
these statements by Zak necessarily narrowed the scope of his invention.
ECF No. 72, PageID.1849.
In its IPR petitions, Facebook in contrast urged that the claims of
the ’720 Patent are invalid because Zak’s invention was “obvious” by a
combination of prior art documents, specifically: (1) a publication or
manual for Microsoft Outlook version 2002 authored by Jim Boyce; and
(2) U.S. Patent No. 5,729,734, issued to inventor Parker. See, e.g., ECF
No. 49-1, PageID.1167 (Zak’s Prelim. IPR Resp.). The prior art generally
disclosed clickable graphical icons or shortcuts with underlying links or
addresses to various applications, i.e., the Boyce manual. Id. at
PageID.1172–73. But Facebook asserted that the Boyce manual also
disclosed “configurable links” because the graphical icons or shortcuts
were selectively displayed to users depending upon the particular user’s
status as a “delegate” and the specific rights given to the “delegate.” Id.
Zak, in turn, disagreed with Facebook’s contention that the prior
art disclosed “configurable links” and claims that Facebook misconstrued
statements he made in opposing the IPRs. Id. He drew contrast between
graphical icons, on one hand, and links, on the other, to argue the prior
14

art did not disclose a link that was configurable. See id. at PageID.1167–
68, 1172–74, 1178–79, 1183–84. More specifically, Zak highlighted the
difference between graphical icons overlaying a link, and a link itself,
which he averred contains the address or location of the application. Id.
Essentially, Zak’s position was that graphical icons overlaying a link are
not links because the graphical icons are not the “mechanisms” that
“point to” and “activate” applications. Id. A link instead contains the
actual address or location for the application. Id. For example, the ’720
Patent states that links can contain “an URL (uniform resource locator),
a TCP/IP address, or other form of identifying location of applications 30
on the network site 34.” ’720 Pat. col. 5 ll. 54–57. According to Zak,
graphical icons typically seen by and clicked on by a user were not links
but rather graphical objects “associated with” a link. ECF No. 49-1,
PageID.1173–74 (Zak’s Prelim. IPR Resp.).
The Court agrees with Zak, finding that proper construction of
these claim limitations should not contain the additional sentence or
alternative phrase proposed by Facebook, specifically that “[t]o activate
the application, the user must act directly on the actual mechanism and
not on a visual representation associated with the mechanism, such as
an icon or shortcut.” None of the statements cited by Facebook include a
clear and unambiguous statement that “[t]o activate the application, the
user must act directly on the actual mechanism and not on a visual
representation associated with the mechanism, such as an icon or
15

shortcut” or the alternative phrasing that a “configurable link” can only
be activated by a user clicking on the alphanumeric link itself, and “not
on an icon, shortcut or other visual representation” that covers the link
for aesthetic purposes. Accordingly, the Court agrees with Zak that his
statements in the IPRs did not specify whether a user clicks indirectly on
the graphical icon or directly on the hyperlink. Accordingly, the doctrine
of prosecution disclaimer does not apply.
B.

“Computer”

Claim
Term
“computer”

Facebook’s
Proposed
Constructions
Invokes 35 U.S.C.
§ 112(f), should
be interpreted as
a means-plusfunction claim
element,
indefinite for lack
of specification
support

Zak’s Proposed
Constructions

Court’s
Constructions

35 U.S.C. §112(f)
does not apply,
not a means-plusfunction claim
element; to the
extent that §112
applies, the term
is not indefinite
because it is
supported by
specification

The disputed
claim limitations
containing the
term “computer”
are not meansplus-function
claim limitations.

The parties next ask the Court to determine whether the disputed
claim limitations containing the term “computer” are means-plusfunction claim limitations within the meaning of 35 U.S.C. § 112(f).
Facebook urges that these limitations are indeed means-plus-function
claim limitations while Zak contends they are not.

16

A means-plus-function claim is one drafted in a manner that
invokes 35 U.S.C. § 112(f), which provides that an element in a claim
“may be expressed as a means or step for performing a specified function
without the recital of structure, material, or acts in support thereof, and
such claim shall be construed to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.”
Williamson v. Citrix Online, LLC, 792 F.3d 1339, 1347 (Fed. Cir. 2015).
By enacting this provision, Congress balanced the interest in allowing
inventors to express a claim limitation by reciting a function to be
performed (rather than a structure for performing that function) while
also constraining the manner in which such a limitation would be
construed, “namely, by restricting the scope of coverage to only the
structure, materials, or acts described in the specification as
corresponding to the claimed function and equivalents thereof.” Id.
(citing Northrop Grumman Corp. v. Intel Corp., 325 F.3d 1346, 1350 (Fed.
Cir. 2003)). Put another way, a means-plus-function claim limitation is a
type of claim that allows an inventor to set forth a function to be
performed without setting forth the specific structure to accomplish the
function. The flexibility built into this type of claim comes at a price for
the inventor as means-plus-function claims are construed to cover only
“the structure, materials, or acts described in the specification as
corresponding to the claimed function and equivalents thereof.”
Williamson, 792 F.3d at 1347–48.
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To determine whether § 112(f) applies, the Federal Circuit
emphasizes the importance of “the presence or absence of the word
‘means.’” Id. at 1348. Inclusion of the word “means” in a claim element
produces a “rebuttable presumption” that § 112(f) applies. Id. (citing
Personalized Media Commc’ns, LLC v. Int’l Trade Comm’n, 161 F.3d 696,
703–04 (Fed. Cir. 1998) (collecting cases)). Absence of the word “means”
likewise creates a rebuttable presumption that § 112(f) does not apply.
Id. But it is not only the presence or absence of “means” that informs the
means-plus-function inquiry. The Federal Circuit has also emphasized
the importance of “whether the words of the claim are understood by
persons of ordinary skill in the art to have a sufficiently definite meaning
as the name for structure.” Greenberg v. Ethicon Endo-Surgery, Inc., 91
F.3d 1580, 1583 (Fed. Cir. 1996). Where the word “means” is included,
courts should look to “the meaning of the language of the limitation in
assessing whether the presumption is overcome.” Williamson, 792 F.3d
at 1348. And where “means” does not appear in a claim, the presumption
against application of § 112(f) can be overcome “if the challenger
demonstrates that the claim term fails to ‘recite[ ] sufficiently definite
structure’ or else recites ‘function without reciting sufficient structure for
performing that function.’” Id. (quoting Watts v. XL Sys., Inc., 232 F.3d
877, 880 (Fed. Cir. 2000)). A claim limitation may fail to recite sufficiently
definite structure when it uses a generic placeholder or “nonce” word,
similar to “means,” such as mechanism, element, device, or module.
18

Mass. Inst. of Tech. & Elecs. For Imaging, Inc. v. Abacus Software, 462
F.3d 1344, 1354 (Fed. Cir. 2006). A word is a nonce word if it fails to recite
sufficiently definite structure to a person of ordinary skill in the art. Id.
at 1349. Nonce words reflect nothing more than verbal constructs that
may be used as a substitute for the word “means” because they “‘typically
do not connote sufficiently definite structure.’” Williamson, 792 F.3d at
1350 (quoting Mass. Inst. of Tech. & Elecs. For Imaging, Inc., 462 F.3d at
1354).
If these claim limitations are construed as means-plus-function
claim limitations, Facebook argues the asserted claims will necessarily
be rendered invalid for being “indefinite” within the meaning of 35 U.S.C.
§ 112(b), which requires that a specification “shall conclude with one or
more claims particularly pointing out and distinctly claiming the subject
matter which the inventor or a joint inventor regards as the invention.”
Essentially, Facebook asserts that the specification at issue fails to
disclose a specific algorithm for the functions to be performed by the
computer.
The relevant portion of Claim 2 of the ’720 Patent, representative
of the asserted claims, is reproduced below with the disputed claim
limitations underlined:
2. A system, including a computer and a web site,
for managing content displayable on the web site
to multiple users of the system who have profiles
stored on the system, comprising:
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at least a first configurable application and a
second configurable application, wherein each of
the first and second configurable applications
includes content that is stored on the computer
and that is displayable to the users of the web site,
and wherein one of the applications is a biography
application that is managed by the computer and
that displays biographical information that is
received from and that is about one of the users of
the system;
wherein at least one of the configurable
applications is generated by the computer at least
in part based on inputs received from multiple
users of the system, the inputs including at least
one of text, graphics, sounds, documents, and
multi-media content;
...
wherein the at least one configurable link is
generated by the computer based at least in part
on a profile attributed to at least one user of the
system and at least one rule that is configurable
by a user acting in the role of an administrator and
which applies user profiles to select what content
stored on the computer can be viewed by which of
the users of the system.
Applying the means-plus-function framework articulated by the
Federal Circuit, this Court finds that the claim limitations reciting a
“computer” do not contain “means” language. Accordingly, there is a
presumption that the claim limitation is not a means-plus-function
limitation. See Media Rights Techs., Inc. v. Capital One Fin. Corp., 800
20

F.3d 1366, 1371 (Fed. Cir. 2015). Yet Facebook can overcome this
presumption by proving that the claim limitation “fails to recite
sufficiently definite structure or else recites function without reciting
sufficient structure for performing that function.” Id. at 1372 (internal
quotations marks omitted) (citing Williamson, 792 F.3d at 1349–50).
“[T]o help determine whether a claim term recites sufficient structure,
[the Court] examine[s] whether it has an understood meaning in the art.”
Linear Tech. Corp. v. Impala Linear Corp., 379 F.3d 1311, 1320 (Fed. Cir.
2004).
Facebook seeks to rebut the presumption that the claim limitations
are not means-plus-function claim limitations by arguing that the term
“computer” is a “nonce” word that triggers 35 U.S.C. § 112(f). Williamson,
792 F.3d at 1349–1350. Examining the claim language, the Court finds
that the term “computer” by itself connotes some degree of structure,
though computers are certainly a broad class of products. The word
“computer” is in every dictionary and is understood to be a programmable
electronic device. ECF No. 40-1 ¶ 43 (Klausner Decl.) The word
“computer” is a broad term because computers come in all shapes and
sizes. And Zak in fact intended a broad definition for the term
“computer.” Id. at ¶ 44. He defined the word as follows in the written
description section of the patent:
The computer or computer system (collectively the
“‘computer”) is any device capable of housing the
21

programming logic that allows the system to
function. The computer can be a stand alone
computer, a server, a mainframe computer, a minicomputer, a web server, an Internet server, an
intranet server, an extranet server, a local area
network (WAN), a wireless network, or any other
form of computational device.
’720 Pat. col. 4-5 ll. 64-4 (reference numbers omitted). Though the term
“computer” is a broad term there is no question that a computer is
understood to be structure. The Court notes that there is nothing
improper or unusual in an inventor using a broad term in his or her
patent claims; if an inventor has created a novel invention, the inventor
should be allowed to claim the full scope of invention as long as he or she
satisfies the other requirements of patentability, such as enablement.
The Court accordingly disagrees with Facebook’s argument that the term
“computer,” as used in the disputed claims, is a “nonce” word that triggers
35 U.S.C. § 112(f). Williamson, 792 F.3d at 1349–1350. The asserted
claims of the ’720 Patent use the term computer in the context of a welldescribed system for managing the content of a web site.
Turning now to the language in the claims surrounding the word
“computer,” the Court finds that the surrounding claim language
describes sufficient structure to avoid the claim limitations being
categorized as means-plus-function claim limitations. The claims of the
’720 patent are directed to a computer used for managing the content
displayed on a web site. They “recite a number of functions carried out by
22

a ‘computer’, including, among other things, generating an ‘application
link’ or a ‘configurable link,’ generating and displaying content, etc.” ECF
No. 40-1, ¶ 46 (Klausner Decl.). For example, Claim 1 of the ’720 Patent
states:
a
plurality
of
configurable
applications
administered by the computer, wherein each
configurable application includes a category of
content stored by the computer and displayable to
users of the web site . . . .
’720 Pat. col. 22 ll. 25–28. The presence of these various functions turns
the broad conception of a general-purpose computer into a specificpurpose computer having sufficient structure to avoid 35 U.S.C. § 112(f).
Moreover, the written description section of the ‘720 Patent is detailed
and sets forth definitions and context concerning the invention of the
claims. The Court finds that a person of ordinary skill in the art would
recognize that a computer that performs the various functions set forth
in the claims, such as generating or administering content for a web site,
has sufficient structure.
Zak asserts that the Federal Circuit case Inventio AG v.
Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350 (Fed. Cir. 2011)
supports his position. In that case the Federal Circuit held that the claim
limitation “computing unit” for efficiently controlling the operation of
elevators in a building was a sufficiently definite structure to avoid being
a means-plus-function claim limitation. Id. at 1359. Facebook responds
23

that Inventio was overruled by the Federal Circuit’s 2015 en banc
decision in Williamson v. Citrix Online, 792 F.3d 1339. The Court agrees
that until the Federal Circuit reaffirms its holding in Inventio, the
precedential value of its ultimate holding that the “computing unit” was
not a means-plus-function claim limitation is minimal. In Inventio, the
Federal Circuit applied a since-overruled standard holding that absence
of the word “means” creates a “strong presumption” that the claim
limitation is not a means-plus-function claim limitation. Inventio, 649
F.3d 1360. Subsequently, however, in Williamson, the Federal Circuit
specifically overruled that line of cases holding that absence of the word
“means” creates a strong presumption of a means-plus-function claim
limitation. Williamson, 792 F.3d at 1349. Inventio’s ultimate holding was
thus based on a now-outdated standard.
Yet Linear Technology Corporation v. Impala Linear Corporation,
379 F.3d 1311, a 2004 Federal Circuit case, supports the Court’s decision
that the disputed claim limitations containing the term “computer” are
not means-plus-function claim limitations. In that case, the Federal
Circuit reversed the district court’s finding that various claim limitations
reciting “circuits” for performing specific functions were means-plusfunction claim limitations. Id. at 1322. For example, one representative
claim limitation stated: “a first circuit for monitoring a signal from the
output terminal to generate a first feedback signal . . . .” Id. at 1316. The
Federal Circuit began its analysis by looking to the dictionary definition
24

of “circuit” and found the term “circuit” would by itself be considered
structural in nature. Id. at 1320. The Federal Circuit then examined the
recited function of the circuit and concluded that a person of ordinary
skill would understand that the term “circuit”, when coupled to the
circuit’s claimed functions, was sufficiently structural to avoid
classification as a means-plus-function claim limitation. Id. at 1320–21.
The Court finds the present case similar to Linear Technology in
that: (1) the claim term “computer” in the ’720 Patent is structure just as
the claim term “circuit” was in Linear Technology; and (2) the functions
recited in the claims of the ’720 Patent that are to be performed by the
“computer” more fully define the structure of the computer just as the
claimed functions in Linear Technology fleshed out the claim term
“circuit.” In other words, a person of ordinary skill in the art would
consider a computer that performs the various functions set forth in the
claims of the ’720 Patent, such as generating or administering content for
a web site, to be structure.
In its response brief Facebook argues that to avoid 35 U.S.C.
§ 112(f) the claims must set forth the programming or describe in detail
the software for performing the functions recited in the claims. ECF No.
40. The Court disagrees that specific programming must be recited in the
claims or written description to avoid 35 U.S.C. § 112(f). Under the facts
of this case a computer that performs the various functions listed in the
claims in the context of managing the content of a web site is sufficiently
25

definite structure to a person of ordinary skill in the art to avoid meansplus-function classification.
The recent Federal Circuit case Zeroclick, LLC v. Apple Inc., 891
F.3d 1003, 1008–09 (Fed. Cir. 2018) further guides the Court’s analysis.
In that case, the Federal Circuit vacated a contrary finding by a district
court and held that claim limitations containing the terms “program” and
“user interface code” related to a graphical user interface for a computer
were not means-plus-function claim limitations. More specifically, the
district court had held that the claim limitations “program . . . that can
operate the movement of the pointer (0)” and “user interface code being
configured to detect one or more locations touched by a movement of the
user’s finger on the screen without requiring the exertion of pressure and
determine therefrom a selected operation” were not means-plus-function
claim limitations. Id. at 1006–07. The Federal Circuit first noted that,
because the claim limitations do not contain the word “means,” it must
be presumed that the claim limitations are not means-plus-function
claim limitations. Id. at 1007. The Federal Circuit then concluded that
the terms “program” and “user interface code” were not used as generic
terms or nonce words “but rather as specific references to conventional
graphical user interface programs or code, existing in prior art at the time
of the inventions.” Id. at 1008. Because conventional graphical user
interfaces were known in the art, the Federal Circuit held that a person
of ordinary skill in the art would recognize the claim limitations as
26

having a sufficiently definite meaning as the name for structure. Id. at
1008–09.
The present case is similar to Zeroclick. As discussed above, in
Zeroclick the Federal Circuit held that a person of ordinary skill in the
art would recognize that the terms “program” and “user interface code”
in the context of the claims referring to conventional structure or
programming for a graphical user interface were not nonce words. Id. at
1008. Similarly, in the present case the Court finds that a person of
ordinary skill in the art would recognize that the term “computer” in the
context of the claims referring to conventional structure or programming
for managing the content displayed on a web site as having a sufficiently
definite meaning as the name for structure. The claims of the ’720 patent
“recite a number of functions carried out by a ‘computer’ including,
among others, generating and administering a plurality of applications,
generating an “application link” or a ‘configurable link,” generating
displayable content, etc.” ECF No. 40-1, ¶ 46 (Klausner Decl.). The Court
finds that a person of ordinary skill in the art would have recognized
these claim limitations as having sufficiently definite meaning as the
name for structure. The Court accordingly concludes that the various
claim limitations containing the term “computer” are not means-plusfunction claim limitations.

27

C.

“Administrator Portal”

Claim Term

Facebook’s
Proposed
Constructions
“administrator Invokes 35
portal”
U.S.C. §112(f),
should be
interpreted as a
means-plusfunction claim
element,
indefinite for
lack of
specification
support

Zak’s Proposed
Court’s
Constructions Constructions
35 U.S.C. §112(f)
does not apply,
not a meansplus-function
claim element;
to the extent
that §112
applies, the term
is not indefinite
because it is
supported by
specification

This claim
limitation is not
a means-plusfunction claim
limitation

Like its arguments concerning the “computer” claim limitation,
Facebook requests that the Court construe the claim language “an
administrator portal” in Claims 2, 7, and 30 as means-plus-function claim
limitations. If the claim limitations are construed in this manner,
Facebook argues, Claims 2 and 7 will become “indefinite” within the
meaning of 35 U.S.C. § 112(b) and therefore invalid because the
specification fails to disclose the specific structure or algorithm for
creating the “administrator portal.” Zak in opposition contends that the
claim limitation “administrator portal” is not a means-plus-function
claim limitation. Both parties have stipulated that if the Court does not
construe “administrator portal” as a means-plus-function claim
limitation that is indefinite within the meaning of 35 U.S.C. § 112(b), it
28

should be construed to mean “interface used to manage applications
and/or business rules.” ECF No. 70.
Claims 2, 7, and 30 recite the term “administrator portal.” Claim 2
of the ’720 Patent, representative of the asserted claims, is reproduced
below with the disputed claim limitation and other relevant claim
language underlined:
2. A system, including a computer and a web site,
for managing content displayable on the web site
to multiple users of the system who have profiles
stored on the system, comprising:
...
an administrator portal through which users of the
system are permitted to act in the role of an
administrator of certain web pages, wherein a user
acting in the role of an administrator may manage
business rules that utilize profiles of the users of
the system to control interaction of the users with
the certain web pages, wherein each user of the
system is permitted to act in the role of an
administrator at least with respect to a subset of
web pages on the web site; and
‘720 Pat. col. 22-23 ll. 20.
Facebook and Zak disagree regarding whether this claim limitation
is a means-plus-function type claim limitation pursuant to 35 U.S.C.
§ 112(f). The Court will apply the same test and procedure discussed
above to determine whether the “administrator portal” claim limitations
29

are means-plus-function claim limitations. In this instance, the claim
limitations reciting “administrator portal” do not contain the word
“means.” Accordingly, there is a presumption that this claim limitation
is not a means-plus-function claim limitation. See Media Rights, 800 F.3d
at 1371. Facebook seeks to rebut the presumption that this claim
limitation is a means-plus-function claim limitation by arguing that
“administrator portal” does not convey sufficiently definite structure to a
person of ordinary skill in art. Facebook’s principal argument is that the
term “administrator portal” is a broad term and that no specific structure
or algorithm is disclosed in the patent for the “administrator portal.” Zak
responds that “administrator portal” is sufficiently definite structure to
avoid a mandatory finding that the term is a means-plus-function claim
limitation.
The Court begins its analysis by assessing the intrinsic evidence of
the claim language itself. The claim sets forth a detailed description of
the function and role of the “administrator portal.” It describes the
“administrator portal through which users of the system are permitted
to act in the role of an administrator of certain web pages, wherein a user
acting in the role of an administrator may manage business rules that
utilize profiles of the users of the system to control interaction of the
users with certain web pages.” ’720 Pat. col. 23 ll. 3–8. This language is
very clear in specifying the role and function of the administrator portal.

30

The written description section of the patent also discusses the
administrator

portal.

In

a

sub-section

of

the

patent

entitled

“Administrator-View,” the patent describes how the system can have an
“administrator console 60 or administrator portal” that “is used to
manage the applications 30 and/or business rules of the system 20.” Id.
at col. 7 ll. 20–22. The written description also states that there can be a
content interface 26 capable of receiving input 24 from the content
provider 34. The written description explains that “[i]n the preferred
embodiment, the content interface 26 includes a portal that allows the
content provider to access the input view and output view in a
simultaneous or substantially simultaneous manner.” Id. at col. 4 ll. 44–
47 (emphasis added.)

31

Figure 2 shows the administrator console 60 or administrator
portal:

The Court finds that a person of ordinary skill in the art would find
the term “administrator portal,” in the context of managing the content
of a web site, connotes sufficient structure to avoid § 112(f). In the context
of the claim language and written description, it is clear that an
administrator portal is simply a user interface where users can “act in
the role of administrator of certain web pages, wherein a user acting in
the role of an administrator may manage business rules that utilize
profiles of the users of the system to control interaction of the users with
certain web pages.” Claim 2, ’720 Pat. col. 23 ll. 3–8. The Court’s
understanding that the administrator portal is a user interface is
32

supported by Figure 2, which shows that a user can use the administrator
console 60 or administrator portal to interface with the various
applications. The fact that this claim limitation may be a broad term does
not mandate that the term be a means-plus-function claim limitation.
The Court’s conclusion is supported by case law. For example, in
Greenberg v. Ethicon Endo-Surgery, Inc., 91 F.3d 1580 (Fed. Cir. 1996),
the Federal Circuit held that the claim limitation “detent mechanism”
was not a means-plus-function claim limitation even though the term is
defined in functional terms and even though the term did not call to mind
a single well-defined structure. The Federal Circuit explained that
“[w]hat is important is not simply that a ‘detent’ or ‘detent mechanism’ is
defined in terms of what it does, but that the term, as the name for
structure, has a reasonably understood meaning in the art.” Id. at 1583.
Like in Greenberg, the Court finds that the term “administrator portal”
in the context of managing content for a web page would be understood
by a person of ordinary skill in the art as the name for structure.
Likewise, in Personalized Media Communications v. ITC, 161 F.3d
696, 705 (Fed. Cir. 1998), the Federal Circuit held that the claim
limitation “digital detector” did not implicate § 112(f) because “[e]ven
though the term ‘detector’ does not specifically evoke a particular
structure, it does convey to one knowledgeable in the art a variety of
structures known as ‘detectors.’” Similarly to Personalized Media
Communications, the Court finds that the term “administrator portal”
33

would evoke, when read in light of the other claim language and written
description, a class of structures for an administrator to interface with in
managing the content of a web site.
Facebook also relies on Advanced Group Information Systems, Inc.
v. Life360, Inc., 830 F.3d 1341 (Fed. Cir. 2016). In that case, the Federal
Circuit held that the claim limitation “symbol generator” for generating
symbols on a computer screen was a means-plus-function claim
limitation. Id. at 1348. In reviewing that case, the Court finds that the
present case is distinguishable. In Life360, the Federal Circuit
determined that the term “symbol generator” was abstract and did not
identify a structure by its function. In contrast, the Court here concludes
that the claim limitation “administrator portal,” when read in the context
of its function set forth in the claims and the written description of the
’720 Patent, connotes a sufficiently definite structure, specifically an
interface for managing the content and business rules of the web site.
The Court therefore concludes that the claim limitations containing
“administrator portal” are not means-plus-function claim limitations.

34

D.

Alleged Indefiniteness of Claim 11 Pursuant to IPXL
Holdings Doctrine

Claim Term

Facebook’s
Proposed
Constructions
“wherein the The claim
recites a method
system uses
step within a
the first
business rule system claim
and is therefore
and
indefinite under
information
IPXL Holdings,
in user
LLC v.
profiles to
Amazon.com,
determine
which content Inc., 430 F. 3d
of the second 1377 (Fed. Cir.
2005).
configurable
application is
viewable by
which of the
other users of
the system”

“wherein the
system uses
the second
business rule
and
information
in user
profiles to
determine
which of the
other users of

The claim
recites a method
step within a
system claim
and is therefore
indefinite under
IPXL Holdings,
LLC v.
Amazon.com,
Inc., 430 F. 3d

Zak’s Proposed
Constructions

Court’s
Constructions

The claim is not
indefinite
because it does
not recite a
method step
within a system
claim. Instead,
the claim uses
permissible
functional
language to
describe the
capabilities of
the system. See,
Mastermine
Software, Inc. v.
Microsoft Corp.,
874 F.3d 1307,
1315 (Fed. Cir.
2017).

This claim
limitation is not
indefinite.

The claim is not
indefinite
because it does
not recite a
method step
within a system
claim. Instead,
the claim uses
permissible
functional
language to

This claim
limitation is not
indefinite.

35

1377 (Fed. Cir.
the system
are permitted 2005).
to provide
content to the
second
configurable
application”

describe the
capabilities of
the system. See,
Mastermine
Software, Inc. v.
Microsoft Corp.,
874 F.3d 1307,
1315 (Fed. Cir.
2017).

Facebook further asserts that Claim 11 of the ’720 Patent is
indefinite within the meaning of 35 U.S.C. § 112(b) and therefore invalid
because it is written improperly. Specifically, Facebook argues that
although the claim is directed to a system it is written in a way that the
system can only be infringed if it is used in a particular manner by the
user. Facebook’s reasoning relies on IPXL Holdings, L.L.C. v.
Amazon.com, Inc., 430 F.3d 1377, 1384 (Fed. Cir. 2005), in which the
Federal Circuit held that a system claim that recited a method of using
that system performed by the user was invalid as being indefinite.
Consistent with IPXL, Facebook argues that Claim 11 of the ’720
Patent recites a system that includes two-method steps that render the
claim indefinite:
 “wherein the system uses the first business rule and information in
user profiles to determine which content of the second configurable
application is viewable by which of the other users of the system. .
. .”

36

 “wherein the system uses the second business rule and information
in user profiles to determine which of the other users of the system
are permitted to provide content to the second configurable
application . . . .”
’720 Patent col. 25 ll. 1–10 (emphasis added). According to Facebook,
these limitations do no merely recite a capability of the system, they
employ “active voice” (“the system uses”), indicating that the limitations
describe affirmative steps rather than capabilities. Facebook points out
that Zak could and should have written these limitations to state, for
example, “wherein the system is capable of using.” In response, Zak
argues that the language of Claim 11 specifies that the business rule is
“configurable” by the administrator, not that the user must actually use
the feature.
35 U.S.C. § 112(b) mandates that a patent must “conclude with one
or more claims particularly pointing out and distinctly claiming the
subject matter which the applicant regards as his invention.” The
Supreme Court has held that this definiteness provision “require[s] 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 Instruments, Inc., 134
S. Ct. 2120, 2129 (2014). Indefiniteness is a question of law that is
reviewed on appeal de novo, though any factual findings by the district
court based on extrinsic evidence are reviewed for clear error. Alfred E.

37

Mann Found. for Sci. Research v. Cochlear Corp., 841 F.3d 1334, 1341
(Fed. Cir. 2016).
In IPXL, 430 F.3d at 1384, a case of first impression, the Federal
Circuit held that a claim covering both a system and a method of actually
using that system was indefinite. The Federal Circuit was concerned that
claiming both the system and a method of using the system within a
single claim can make it unclear whether infringement occurs when one
creates an infringing system, or whether infringement occurs when the
user actually uses the system in an infringing manner. UltimatePointer,
L.L.C. v. Nintendo Co., 816 F.3d 816, 826 (Fed. 2016) (quotations and
citations omitted). The claim in IPXL provided:
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.
IPXL, 430 F.3d at 1384. The Federal Circuit held that “it is unclear
whether infringement 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 the input means to change transaction information or uses
the input means to accept a displayed transaction.” Id. The Federal
38

Circuit 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.” Id.
In Mastermine Software, Inc. v. Microsoft Corporation, 874 F.3d
1307 (Fed. Cir. 2017), the Federal Circuit again faced the issue of
whether a claim was invalid for including a method step in a system
claim. The pertinent claim stated:
“A system comprising:
...
a reporting module installed within the CRM
software application . . . ;
...
wherein the reporting module installed within the
CRM software application presents a set of userselectable database fields as a function of the
selected report template, receives from the user a
selection of one or more of the user-selectable
database fields, and generates a database query as
a function of the user selected database fields . . . .”
Id. at 1315. After reviewing cases addressing the same issue it had
decided since IPXL, the Federal Circuit distinguished between
situations: (1) where the system or apparatus claim contains active verbs
(e.g., presents, receives, and generates) but was intended to mean that
the system “is capable of” performing a function; and (2) where the
39

system or apparatus claim contains language that specifies that a user
must actually perform a function. See id. Claims falling in the former
category are definite and thereby valid while claims falling in the latter
category are indefinite and thereby invalid. Id. at 1316. The Federal
Circuit looked to the disputed claim language and held that “[b]ecause
the claims merely use permissible functional language to describe the
capabilities of the claimed system,” and “do not claim activities performed
by the user,” the claims were definite. Id.
Applying the Federal Circuit’s guidance in Mastermine to the facts
of the case at bar, the Court finds that the disputed claim limitations are
describing the capabilities of the claimed system and not requiring actual
performance of a function by a user or the system. Claim 11 of the ’720
Patent is reproduced below with the relevant claim limitations
highlighted:
11. A system, including a computer, for managing
content displayable on a collection of web pages to
multiple users of the system who have profiles
stored on the system, the users including an
administrator of the collection of web pages,
comprising:
a plurality of configurable applications that are
managed by the computer, including at least a first
configurable application and a second configurable
application, wherein the first and second
configurable applications each includes content
displayable on the collection of web pages, wherein
40

the content includes at least one of text, graphics,
sounds, documents, and multi-media content;
wherein the first configurable application is a
biography application that displays biographical
information about the administrator of the
collection of web pages;
wherein the second configurable application is
generated by the computer at least in part based
on content received from the administrator and at
least in part based on content received from one or
more of the other users of the system;
at least one application link on at least one of the
web pages that points to at least one of the
plurality of configurable applications so as to
enable the users to selectively activate the
configurable application to which the application
link points;
a first business rule that is configurable by the
administrator, wherein the system uses the first
business rule and information in user profiles to
determine which content of the second
configurable application is viewable by which of
the other users of the system; and
a second business rule that is configurable by the
administrator, wherein the system uses the second
business rule and information in user profiles to
determine which of the other users of the system
are permitted to provide content to the second
configurable application.
Read in context, the Court finds that the active voice in Claim 11 is
merely describing the capability of the system, specifically how the
41

system is setup and designed, and is not requiring that a user perform
steps. The claim language states that the business rule “is configurable”
by the administrator, and then the system “uses” the business rule and
information in the user profile. The Court finds this language is merely
stating what the system is designed to do. The Court also finds that the
facts of this case are similar to the facts of Mastermine. Accordingly, the
Court does not find Claim 11 to be invalid for indefiniteness.
SO ORDERED.

Dated: February 6, 2020

s/Terrence G. Berg
TERRENCE G. BERG
UNITED STATES DISTRICT JUDGE

Certificate of Service
I hereby certify that this Order was electronically filed, and the
parties and/or counsel of record were served on February 6, 2020.
s/A. Chubb
Case Manager

42