from the United States District Court for the Northern
District of California in No. 3:15-cv-04417-JST, Judge Jon S.
David Ledahl, Russ August & Kabat, Los Angeles, CA,
argued for plaintiff-appellant. Also represented by Marc
R. Palmore, Morrison & Foerster LLP, Washington, DC,
argued for defendant-appellee. Also represented by Seth W.
Lloyd, Brian Robert Matsui; Scott F. Llewellyn, Denver, CO.
Reyna, Taranto, and Hughes, Circuit Judges.
Hughes, Circuit Judge.
LLC sued Apple Inc. in the U.S. District Court for the
Northern District of California, asserting claims 2 and 52 of
U.S. Patent No. 7, 818, 691 and claim 19 of U.S. Patent No.
8, 549, 443. The district court found the asserted claims
invalid for indefiniteness, reasoning that the claims recited
means-plus-function terms for which the specifications do not
disclose sufficient structure. Because the district court
failed to undertake the relevant inquiry and make related
factual findings to support its conclusion that the asserted
claims recited means-plus-function terms, we vacate and
'691 and '443 patents relate to modifications to the
graphical user interfaces of devices such as computers and
mobile phones, modifications that allow the interfaces to be
controlled using pre-defined pointer or touch movements
instead of mouse clicks. J.A. 3-4. More specifically, the
claimed invention contemplates updating existing user
interface programs by using a two-step method recited in
claims 2 and 52 of the '691 patent, or by making two
configuration changes to the user interface code as recited
in claim 19 of the '443 patent.
of the '691 patent recites:
2. A graphical user interface (GUI), which may comprise an
update of an existing program, that may fully operate a GUI
by a two step method of movement of a pointer (0) to operate
one or more functions within the GUI, wherein, said existing
program is any existing program that can operate the movement
of the pointer (0) over a screen (300) and has one or more
functions operated by one or more other methods apart from
said two step method,
and/or one or more functions operated by said one or more
other methods in said existing program can be updated to
operate by said two step method,
wherein said GUI executes one or more functions within the
GUI by the completion of the following said two step method:
first said pointer (0) is immediately adjacent or passes
within a control area (1), which is an area of the screen
(300) that may be any size including from a pixel on the
screen (300) to occupying the whole screen (300), and
second by the completion of a subsequent movement of said
pointer (0) according to a specified movement generates a
'click' event, thereby triggering one ...