1 2 3 4 UNITED STATES DISTRICT COURT 5 NORTHERN DISTRICT OF CALIFORNIA 6 7 ON24, INC., Case No. 21-cv-07721-EMC

8 Plaintiff,

ORDER GRANTING DEFENDANT’S

9 v. MOTION FOR PARTIAL SUMMARY

JUDGMENT

10 WEBINAR.NET, INC., 11 Defendant. Docket No. 70

12 13 14 Plaintiff ON24, Inc. has filed suit against Defendant webinar.net, Inc., asserting a variety 15 of business torts, including patent infringement. Now pending before the Court is webinar’s 16 motion for partial summary judgment on the patent infringement claim. According to webinar, the 17 patent at issue – the ‘480 patent – is invalid based on indefiniteness. Having considered the 18 parties’ briefs and accompanying submissions, as well as the oral argument of counsel, the Court 19 hereby GRANTS webinar’s motion. 20 I. FACTUAL & PROCEDURAL BACKGROUND 21 ON24 has asserted the following causes of action against webinar: 22 (1) Infringement of ON24’s ‘480 patent. 23 (2) Interference with contractual relations between ON24 and its customers. 24 (3) Unfair competition. 25 (4) Violation of the Lanham Act by making false or misleading representations about 26 ON24. 27 The pending motion for partial summary judgment focuses on the patent infringement claim only. 1 The field of the invention is online communications applications. See ‘480 patent, col. 1:14-15. 2 The abstract for the patent describes the invention at issue as follows:

3 Systems methods and devices are provided for a presentation including a communications console with component aggregation. 4 In one potential implementation, a computing device with an application framework receives a communication manager object 5 via a network connectivity device and executes the communication manager object within the application framework. The computing 6 device may then receive and execute communications components and a presentation component[] within the application framework 7 using the communication manager object. The communication manager object may then manage interface and display of the 8 presentation information via the application framework, as modified by communication components. 9 10 ‘480 patent, abstract; see also Overby Decl. ¶ 21 (stating that there are four main components: “(1) 11 the ‘presentation component,’ which is the main presentation (e.g., a speaker’s video stream); (2) 12 the ‘communications components,’ which are audio-visual add-ons to the presentation (e.g., a 13 slide show, a Twitter feed, a menu ribbon); (3) the application framework, where the user interacts 14 with the first two components (e.g., the user’s browser); and . . . (4) the ‘communication manager 15 object,’ which manages the two components so they work seamlessly on the application”). 16 As background, the specification for the patent acknowledges that there are “numerous 17 structures . . . for direct online communications” but notes that

18 [t]he current solutions for providing interactivity and user control . . . are limited in the amount of user control that they provide for an 19 audience member. These online communications applications limit flexibility, integration, and user selections in a variety of ways in 20 order to streamline and limit the size and complexity of the application. 21 For example, current direct online applications limit flexibility by 22 restricting the amount of customization that can be achieved within an individual communications component. None of the existing 23 direct online platforms use a completely separate, encapsulated architecture for implementing communications component 24 customization per webcast, and none of them allow an audience member to set up and view a webcast per their own interests. They 25 also limit integration by restricting the amount of interactivity provided to a highly-customized communications. For example, 26 existing webcasting platforms do not have an open platform for integrating third-party communications components of any 27 significant size or complexity. The integration of third-party components. Attempts to expand flexibility in current solutions 1 involve creation of a collection of closed “widgets” which become the non-expandable limitations of the application. 2 Downloaded executable installed applications do exist currently that 3 use a component model, but the requirement to download, execute, and install a desktop executable application in a client computer 4 make the current use of these indirect executable applications less secure and more cumbersome from an initial use perspective. None 5 of the existing applications function in a context that is fully-online, without a downloaded desktop application. 6 7 ‘480 patent, col. 1:19-54; see also Overby Decl., Ex. H (in a decision on a petition brought by 8 webinar against ON24, PTAB stating that “[t]he ‘480 patent addresses the problem of customizing 9 webcast presentations by being ‘fully online’ without the need for a separate downloaded desktop 10 application”). 11 A representative independent claim for the ‘480 patent is as follows: 12 1. An audience computing device comprising: 13 a processing device; 14 a memory device;

15 an application framework that receives a communication manager object via a network connectivity device and executes the 16 communication manager object within the application framework;

17 wherein the application framework receives and executes at least two communications components and a presentation component 18 within the application framework using the communication manager object and each component exchanges data with the 19 communication manager object within the application framework during a presentation to present the presentation to a user of the 20 audience computing device without downloading and installing an application, and the communication manager object manages 21 interface and display of the presentation via the application framework; and 22 wherein the communication components are at least two of a slide 23 communications component, a media communications component and a menu ribbon component, each of the communication 24 components comprises graphical interface information, and the communication manager object automatically modifies the 25 graphical interface information to a standardized interface format. 26 ‘480 patent, claim 1 (emphasis added). 27 As reflected by the bolded language above, the key term in dispute at summary judgment 1 object” is an indefinite term. 2 “Communications manager object” is discussed in the specification in column 4.

3 The complex interaction within the various components is managed by a central “Communications Manager” object, which registers 4 events or requests from individual components, identifies the priority of each event, and determines the callback mechanism to 5 deliver information back to the calling component. This object then applies a layer of security filters to verify that the calling component 6 has the appropriate permissions to access the resources it is requesting, and that it has not exceeded its quota of requests within a 7 given time frame. Once all these filters are passed and the Communications Manager determines that the event or method 8 being called can in fact be acted on – the event or method is allowed to proceed in a metered and organized way. Registered event 9 listeners, or method calls return the information to the component via a callback method, including the requested information, if any, 10 and status of the original request. In this way, the platform enables the limited resources available on the browser to be allocated with 11 the appropriate priority and rationing so as to allow for a smooth, seamless, and integrated user experience. Contrast this organized 12 platform approach with a mashup of components – each unaware of the other, and each competing for the limited resources available to 13 the browser (CPU, threads, number of concurrent request to the back-end systems available, etc.), degrading performance in 14 unpredictable and undesirable ways. 15 ‘480 patent, col. 4:24-48. 16 II. DISCUSSION 17 A. Legal Standard 18 Federal Rule of Civil Procedure 56 provides that a “court shall grant summary judgment 19 [to a moving party] if the movant shows that there is no genuine dispute as to any material fact and 20 the movant is entitled to judgment as a matter of law.” Fed. R. Civ. P. 56(a). An issue of fact is 21 genuine only if there is sufficient evidence for a reasonable jury to find for the nonmoving party. 22 See Anderson v. Liberty Lobby, Inc., 477 U.S. 242, 248-49 (1986). “The mere existence of a 23 scintilla of evidence . . . will be insufficient; there must be evidence on which the jury could 24 reasonably find for the [nonmoving party].” Id. at 252. At the summary judgment stage, evidence 25 must be viewed in the light most favorable to the nonmoving party and all justifiable inferences 26 are to be drawn in the nonmovant’s favor. See id. at 255. 27 In the instant case, patent invalidity is an affirmative defense. webinar, as the alleged 1 468 F.3d 1366, 1378 (Fed. Cir. 2006) (“An issued patent is presumed to be valid, and the burden 2 of establishing invalidity as to any claim of a patent rests upon the party asserting such 3 invalidity.”). “Clear and convincing evidence is required to invalidate a patent.” Id. “When 4 evaluating a motion for summary judgment, the court views the record evidence through the prism 5 of the evidentiary standard of proof that would pertain at a trial on the merits.” Eli Lilly & Co. v. 6 Barr Labs., Inc., 251 F.3d 955, 962 (Fed. Cir. 2001). 7 B. Law on Indefiniteness and Means-Plus-Function Claims 8 The Supreme Court has held that “a patent is invalid for indefiniteness if its claims, read in 9 light of the specification delineating the patent, and the prosecution history, fail to inform, with 10 reasonable certainty, those skilled in the art about the scope of the invention.” Nautilus, Inc. v. 11 Biosig Instruments, Inc., 572 U.S. 898, 901 (2014); see also 35 U.S.C. § 112(b) (“The 12 specification shall conclude with one or more claims particularly pointing out and distinctly 13 claiming the subject matter which the inventor or a joint inventor regards as the invention.”).1 14 Indefiniteness is a question of law. See Teva Pharms. USA, Inc. v. Sandoz, Inc., 789 F.3d 1335, 15 1341 (Fed. Cir. 2015); see also ePlus, Inc. v. Lawson Software, Inc., 700 F.3d 509, 517 (Fed. Cir. 16 2012). (“[I]ndefiniteness is a question of law and in effect part of claim construction.”). 17 In the instant case, webinar claims indefiniteness based on its assertion that the term 18 “communication manager object” is a means-plus-function term. Title 35 U.S.C. § 112(f) covers 19 means-plus-function claims. It provides as follows: 20 An element in a claim for a combination may be expressed as a 21 means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall 22 be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. 23 24 35 U.S.C. § 112(f) (emphasis added).2 If there is, in fact, a means-plus-function term, then the 25 first step in construing that term is to “‘identify the claimed function.’” Rain Computing, Inc. v. 26

27 1 Section 112(b) was formerly referred to as paragraph 2 of § 112. 1 Samsung Elecs. Am., Inc., 989 F.3d 1002, 1007 (Fed. Cir. 2021). Next, a court looks at the 2 specification of the patent to see what structure, if any, is disclosed that corresponds to the claimed 3 function. See id. If no corresponding structure is sufficiently disclosed, then the means-plus- 4 function term is deemed indefinite. See id. 5 ON24, however, disputes webinar’s claim that the term at issue – “communication 6 manager object” – is a means-plus-function term. Whether a claim is in fact a means-plus- 7 function claim is also a legal question. See Williamson v. Citix Online, LLC, 792 F.3d 1339, 1346 8 (Fed. Cir. 2015). A court presumes that a claim limitation is subject to § 112(f) – i.e., is a means- 9 plus-function term – “when the claim language includes the term ‘means.’” Dyfan LLC v. Target 10 Corp., 28 F.4th 1360, 1365 (Fed. Cir. 2022). “The inverse is also true – we presume that a claim 11 limitation is not [a means-plus-function term] in the absence of the term ‘means.’” Id. (emphasis 12 added). 13 This presumption, however, “is rebuttable. The presumption can be overcome if a 14 challenger [here, webinar] demonstrates that the claim term ‘fails to “recite sufficiently definite 15 structure.”‘“ Id. The Federal Circuit has explained that 16 “[n]once words that reflect nothing more than verbal constructs may 17 be used in a claim in a manner that is tantamount to using the word ‘means,’” and can invoke § 112[(f)]. We have emphasized that “the 18 essential inquiry is not merely the presence or absence of the word ‘means,’ but whether the words of the claim are understood by 19 persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.” “What is important is . . . that 20 the term, as the name for structure, has a reasonably well understood meaning in the art.” 21 Intrinsic evidence, such as the claims themselves and the 22 prosecution history, can be informative in determining whether the disputed claim language recites sufficiently definite structure or was 23 intended to invoke § 112[(f)]. In addition, because this inquiry turns on the understanding of a person of ordinary skill in the art, we often 24 look to extrinsic evidence when determining whether a disputed limitation would have connoted structure to a person of ordinary 25 skill. 26 Id. (emphasis added); see also Zeroclick, LLC v. Apple Inc., 891 F.3d 1003, 1007 (Fed. Cir. 2018) 27 (repeating that the “essential inquiry remains ‘whether the words of the claim are understood by 1 structure’”). 2 C. Whether “Communication Manager Object” Is a Means-Plus-Function Term 3 In the case at bar, the term “communication manager object” does not use the word 4 “means.” Therefore, there is a presumption that the term is not a means-plus-function term. 5 According to ON24, the specification of the ‘480 patent, combined with a declaration from its 6 expert Walter Overby, also establish that a communication manager object has a particular 7 structure. 8 As a practical matter, the Court focuses on the Overby declaration because his declaration 9 discusses the language used in the specification; the basic issue is “whether the words of the claim 10 are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the 11 name for structure.” Dyfan, 28 F.4th at 1365. 12 The Overby declaration sufficiently demonstrates that the broader term “object” would be 13 understood by a person of ordinary skill in the art to be a structure of some kind. Mr. Overby 14 explains that a person of ordinary skill in the art would understand that the term “object” means a 15 “particular type of software structure with specific characteristics.” Overby Decl. ¶ 7; see also 16 Overby Decl. ¶ 9 (“‘An object resembles an autonomous unit in that it has capabilities and may be 17 asked to perform services by other units.’”) (emphasis omitted). “By 2010, in object-oriented 18 programming or coding, such as what is addressed in the ‘480 patent, ‘object’ meant a software 19 construct that has state, exhibits some well-defined behavior, and has a unique identity.”3 Overby 20 Decl. ¶ 11; see also Overby Decl., Ex. C (Encyclopedia Britannica online) (defining “object- 21 oriented programming”; stating that “[o]bject-oriented languages help to manage complexity in 22 large programs,” and “[o]bjects package data and the operations on them so that only the 23 operations are publicly accessible and internal details of the data structures are hidden”). 24 Furthermore, as Mr. Overby points out, there is some language in the specification indicating that 25 the term “object” reflects a structure. See ‘480 patent, col. 6:62-7:1 (“The innovations herein may 26 3 In Exhibit D to the Overby declaration, there is a lengthy excerpt about objects from a 27 publication titled Object-Oriented Analysis and Design with Applications (3d ed). Mr. Overby, 1 be described in the general context of computer-executable instructions, such as program modules, 2 being executed by a computer, computing component, etc. In general, program modules may 3 include routines, programs, objects, components, data structures, and such that perform particular 4 tasks or implement particular abstract data types.”) (emphasis added). 5 But just because a person of ordinary skill in the art would understand the broader term 6 “object” to mean a structure of some kind, that is not the end of the inquiry. The term at issue here 7 is not simply “object,” but the phrase “communication manager object.” Mr. Overby does not 8 claim anywhere in his declaration that this specific term has a commonly understood meaning, 9 other than that it is some kind of software. Cf. Rain, 989 F.3d at 1006 (noting that the parties did 10 “not dispute that ‘user identification module’ has no commonly understood meaning and is not 11 generally viewed by one skilled in the art to connote a particular structure”). 12 At the hearing, ON24 seemed to suggest that it is enough for a person of skill in the art to 13 recognize that a communication manager object is software of some kind – i.e., that fact alone 14 means that there is sufficient structure such that the term is not a means-plus-function term. The 15 Court does not agree. 16 In this regard, Dyfan is a particularly instructive case. In Dyfan, the patents at issue (which 17 shared the same specification) “describe[d] improved systems for delivering messages to users 18 based on their locations. For example, the shared specification discloses a communications 19 system that provides users with information tailored to their particular interests or needs based on 20 their presence within a specified location. . . .” Dyfan, 28 F.4th at 1362. A representative claim in 21 one of the patents referred to a “system” comprised of multiple elements, including “code” 22 configured to perform certain functions when executed. See id. at 1363. The issue before the 23 Federal Circuit was whether “code”/”application” was a means-plus-function term. 24 The court noted first that “structure can be recited in various ways, including through the 25 use of ‘a claim term with a structural definition that is either provided in the specification or 26 generally known in the art,’ or a description of the claim limitation’s operation and ‘how the 27 function is achieved in the context of the invention.’” Id. at 1366. 1 “means,” there was a presumption that the term was not a means-plus-function term. “To 2 overcome this presumption, [the defendant] had to show, by a preponderance of the evidence, that 3 persons or ordinary skill in the art would not have understood the ‘code’/’application’ limitations 4 to connote structure in light of the claim as a whole.” Id. at 1367. 5 The Federal Circuit ultimately held that the defendant failed to overcome this presumption. 6 It pointed out there was unrebutted testimony from the defendant’s own expert that a person of 7 ordinary skill in the art would have understood the term “application” as a particular structure. 8 “More specifically, [the defense expert] Dr. Goldberg testified that the term ‘application’ would 9 have been commonly understood to mean a ‘computer program intended to provide some service 10 to a user,’ and that developers could have, at the relevant time, selected existing ‘off-the-shelf 11 software’ to perform specific services and functions.” Id. (emphasis added). Similarly, the 12 defense expert testified that “a person of ordinary skill would understand that ‘code’ is ‘a bunch of 13 software instructions’” and that “a person of ordinary skill would have known that the claimed 14 function of displaying information could be implemented using ‘off-the-shelf’ code or 15 applications.” Id. at 1368 (emphasis added). “[I]n view of Dr. Goldberg’s unrebutted testimony 16 that ‘code’ and ‘application’ would have connoted structure to a person of ordinary skill and given 17 the availability of off-the-shelf code to perform the recited claim functions,” the Federal Circuit 18 rejected the defendant’s contention that “code”/”application” was a means-plus-function term. Id. 19 (emphasis added).

20 Unlike in the mechanical arts, the specific structure of software code and applications is partly defined by its function. Apple, 757 F.3d at 21 1298-99. In determining whether software limitations like those at issue here recite sufficient structure, we can look beyond the initial 22 “code” or “application” term to the functional language to see if a person of ordinary skill would have understood the claim limitation 23 as a whole to connote sufficiently definite structure. Zeroclick, 891 F.3d at 1008 (concluding that the disputed terms are used “not as 24 generic terms or black box recitations of structure or abstractions, but rather as specific references to conventional . . . code, existing in 25 prior art at the time of the inventions.”); Linear Tech., 379 F.3d at 1320 (“[W]hen the structure-connoting term . . . is coupled with a 26 description of the [term’s] operations, sufficient structural meaning generally will be conveyed to persons of ordinary skill in the art, and 27 § 112[(f)] presumptively will not apply.”); Apple, 757 F.3d at 1298- recitation of the code or application’s operation would have 1 connoted structure to persons of ordinary skill.

2 Reviewing the alleged means-plus-function limitation in full, the claim requires code configured to be implemented on a mobile 3 device to display information via a display of the mobile device, receive information (including location-relevant information) via a 4 wireless communications protocol, and display visual information based on the received location-relevant information after certain 5 conditions are met. See J.A. 906 (Goldberg Dep. 140:23-141:13). Dr. Goldberg testified that persons of ordinary skill in the art would 6 have known of off-the-shelf code and applications for displaying any desired information. . . . Accordingly, because the recited functions 7 can be performed by conventional off-the-shelf software, a person of ordinary skill in the art would have understood the alleged means- 8 plus-function “code” limitations in the asserted claims to connote structure. 9 10 Id. at 1368-69 (emphasis added); see also Zeroclick, 891 F.3d at 1008 (concluding that “a person 11 of ordinary skill in the art could reasonably determine from the claim language that the words 12 ‘program’ . . . and ‘user interface code’ . . . are not used as generic terms or black box recitations 13 of structure or abstractions, but rather as specific references to conventional graphical user 14 interface programs or code, existing in prior art at the time of the inventions”). 15 As indicated above, the Dyfan court did not hold that “application” and “code” had 16 sufficient structure (and thus were not means-plus-function terms) because both terms were 17 understood to be software or computer programs. Rather, the Federal Circuit also considered what 18 function the software provided and how that function would be carried out, i.e., through off-the- 19 shelf code available at the time. Cf. Sisvel Int’l S.A. v. Sierra Wireless, Inc., No. 2022-1493, 2023 20 U.S. App. LEXIS 26590, at *26 (Fed. Cir. Oct. 6, 2023) (stating that, “for a means-plus-function 21 limitation where the corresponding structure is an algorithm, the specification need not disclose all 22 the details of the algorithm to satisfy the definiteness requirement of § 112 ¶ 2,” but “what is 23 disclosed [should] be sufficiently definite to a skilled artisan”) (emphasis added). It was because 24 of this additional information that the court could conclude that there was no “‘black box 25 recitation[] of structure.’”4 Dyfan, 28 F.4th at 1368; see also Takadu Ltd. v. Innovyze LLC, No. 26 21-291-RGA, 2023 U.S. Dist. LEXIS 45115, at *21-23 (D. Del. Mar. 17, 2023) (“agree[ing] with 27 1 Defendant that ‘analysis engine’ is a means-plus-function limitation”; “[t]he parties agree that an 2 ‘engine’ in this context refers to a program or part of a program to perform a function or manages 3 data,” but “[t]he term ‘analysis’ does not add sufficient structure to take the term out of § 4 112[(f)][:] Defendant’s expert states that a POSA ‘would not have been familiar with a specific 5 combination of software and/or hardware referred to as an “analysis engine,”’” and “Plaintiff’s 6 expert does not state that the term is commonly used to connote structure nor that the term is used 7 to reference conventional programs that a POSA would recognize as an ‘analysis engine’”); 8 Western DI Identity Sec. LLC v. Apple, Inc., No. 1:22-CV-58-LY, 2022 U.S. Dist. LEXIS 199275, 9 at *12-14 (W.D. Tex. Nov. 2, 2022) (underscoring that the patent did not simply recite to an 10 “algorithm” but rather an “encryption” or “encoding” algorithm specifically, and plaintiff provided 11 “extrinsic evidence from technical dictionaries, government publications, and other publicly 12 disclosed sources showing that the claim language references ‘conventional’ or ‘off-the-shelf’ 13 encryption or encoding algorithms known to persons of ordinary skill in the art at the time of 14 invention”). 15 In his declaration, Mr. Overby maintains: “One of skill in the art would understand the 16 phrase ‘communication manager object’ in the ‘480 patent to correspond to a particular set of 17 functions, which is fleshed out specifically in at least two places in the ‘480 patent, but also 18 generally in the entirety of the disclosure and how the inventors described their invention as a 19 whole.” Overby Decl. ¶ 17. The problem with this statement is that it simply conveys what the 20 function of a communication object manner is5; it does not shed any light as to how that 21

22 5 See, e.g., ‘480 patent, col. 4:24-48 (stating, inter alia, stating that the communication manager object “registers events or requests from individual components, identifies the priority of each 23 event, and determines the callback mechanism to deliver information back to the calling component”; it also “applies a layer of security filters to verify that the calling component has the 24 appropriate permissions to access the resources it is requesting, and that it has not exceeded its quota of requests within a given time frame,” and, “[o]nce all these filters are passed and the 25 Communications Manager determines that the event or method being called can in fact be acted on – the event or method is allowed to proceed in a metered and organized way”); ‘480 patent, claim 26 1 (providing, inter alia, that “the application framework receives and executes at least two communications components and a presentation component within the application framework 27 using the communication manager object”; that “each component exchanges data with the 1 functionality is achieved. See also Overby Decl. ¶ 21 (testifying that the communication object 2 manager “manages the two components [i.e., the presentation component and the communications 3 component] so they work seamlessly on the application”); cf. Sisvel, 2023 U.S. App. LEXIS 4 26590, at *18-19, 27-29 (indicating that, where software protocols are mentioned by name in a 5 specification, whether those protocols constitute sufficient specific structure must be considered 6 from the perspective of a skilled artisan). 7 In his declaration, Mr. Overby also asserts that the ‘480 patent “lay out what this object 8 does, how it does it, and with what other components it interacts.” Overby Decl. ¶ 18 (emphasis 9 added). But Mr. Overby does not convey the “how.” For example, he contends that “the claims 10 themselves show how the pieces of this invention interact,” Overby Decl. ¶ 22, but the Federal 11 Circuit has indicated that this kind of information is not enough to show how a function is 12 achieved. See Rain, 989 F.3d at 1006 (noting that, in a prior Federal Circuit decision, “we held 13 that the written description of a ‘copyright compliance mechanism,’ including how it was 14 connected to various parts of the system, how it functioned, and its potential functional 15 components, was not enough to provide sufficient structure to the claimed ‘compliance 16 mechanism’”) (emphasis added). As another example, Mr. Overby claims that the patent 17 “provide[s] an algorithm or structure for the Communication Manager Object, which would allow 18 one of skill in the art to understand how to code the object, given that the steps to or functions of 19 the algorithm are sufficiently definite such that one of skill in the art would be expected to be able 20 to code for them.” Overby Decl. ¶ 24. But the Overby declaration does not go on to pinpoint 21 what the steps of the algorithm are. Therefore, there is simply a black box recitation of structure 22 as there was in Dyfan. In contrast to Dyfan, Mr. Overby does not point to or even suggest that the 23 communication manager object is an off-the-shelf object or software known in the field. ON24’s 24 argument is particularly problematic given that, apparently, the claimed novelty in the ‘480 patent 25 is in fact the communication manager object.6 26 ON24 protests still that the PTAB did not have “difficulties in construing” the term 27 1 “communication manager object” during an inter partes review which was instigated by webinar 2 against ON24. Overby Decl. ¶ 27 (adding that the PTAB concluded a communication manager 3 object exchanges data with the communication components). The problem with this statement is 4 that the PTAB simply defined the word in terms of its functionality. Moreover, on inter partes 5 review, invalidity based on indefiniteness technically cannot be raised. See Molo Design, Ltd. v. 6 Chanel, Inc., No. 21-CV-01578 (VEC), 2022 U.S. Dist. LEXIS 79480, at *13 (S.D.N.Y. May 2, 7 2022) (“Petitioners before the PTAB may only seek to cancel patent claims ‘on a ground that 8 could be raised under section 102 [novelty] or 103 [non-obvious subject matter] and only on the 9 basis of prior art consisting of patents or printed publications.’ All other claims relating to the 10 validity of a patent are outside the scope of inter partes review, including claims of 11 indefiniteness.”). 12 Accordingly, for the reasons stated above, the Court concludes that the term 13 “communication manager object” is a means-plus-function term. webinar has successfully 14 rebutted the presumption that the term is not a means-plus-function term. 15 D. Indefiniteness 16 Having concluded that “communication manager object” is a means-plus-function term, 17 the Court now turns to whether there is an indefiniteness problem.

18 The first step in construing a means-plus function claim is to “identify the claimed function.” After identifying the function, we 19 then “determine what structure, if any, disclosed in the specification corresponds to the claimed function.” “Under this second step, 20 structure disclosed in the specification is corresponding structure only if the specification or prosecution history clearly links or 21 associates that structure to the function recited in the claim.” 22 Rain, 989 F.3d at 1007. As discussed below, where the function is software performed by a 23 general-purpose computer or microprocessor, the specification must disclose more. 24 In Rain, the Federal Circuit considered the term “user identification module.” It noted that, 25 at step one, there was no dispute that “the function of ‘user identification module’ is ‘to control 26 access to one or more software application packages to which the user has a subscription.’” Id. 27 As for step two, the structure in the specification that was linked with the function of controlling 1 card, IC card, flash memory drive, memory card, CD-ROM) which “amount[ed] to nothing more 2 than a general purpose computer.” Id. The Federal Circuit then explained, where “the function is 3 performed by a general-purpose computer or microprocessor, the second step generally further 4 requires that the specification disclose the algorithm that the computer performs to accomplish that 5 function.” Id.

6 “[C]ontrol[ling] access to one or more software application packages to which the user has a subscription” requires more “than 7 merely plugging in a general purpose computer.” Rather, some special programming, i.e., an algorithm, would be required to 8 control access to the software application packages. . . . Under these circumstances, where a general purposes computer is the 9 corresponding structure and it is not capable of performing the controlling access function absent specialized software, an algorithm 10 is required.

11 Nothing in the claim language or the written description provides an algorithm to achieve the “control access” function of the “user 12 identification module.” . . . Without an algorithm to achieve the “control access” function, we hold the term “user identification 13 module” lacks sufficient structure and renders the claims indefinite. 14 Id. at 1007-08.7 15 Rain is consistent with earlier Federal Circuit case authority holding that, “when a patentee 16 invokes means-plus-function claiming to recite a software function, it accedes to the reciprocal 17 obligation of disclosing a sufficient algorithm as corresponding structure.” EON Corp. IP 18

19 7 The Court notes that indefiniteness and enablement are distinct and different inquiries. Compare Nautilus, 572 U.S. at 901 (stating that “a patent is invalid for indefiniteness if its claims, read in 20 light of the specification delineating the patent, and the prosecution history, fail to inform, with reasonable certainty, those skilled in the art about the scope of the invention”); with Liquid 21 Dynamics Corp. v. Vaughan Co., 449 F.3d 1209, 1224 (Fed. Cir. 2006) (noting that, “[i]n order to enable the claims of a patent pursuant to § 112, the patent specification must teach those of 22 ordinary skill in the art ‘how to make and use the full scope of the claimed invention without undue experimentation’”). That being said, the indefiniteness issue here (i.e., a means-plus- 23 function term that involves a general-purpose computer or software) is similar to the issue of enablement. See Haddad v. United States, 164 Fed. Cl. 28, 67-68 (2023) (noting that “enablement 24 and indefiniteness may conceptually overlap,” but adding that “the legal standards are distinct” and “lack of enablement and lack of written description[] are not proper to address during claim 25 construction”); cf. ASM Am., Inc. v. Genus, Inc., No. C-01-2190 EDL, 2002 U.S. Dist. LEXIS 15348, at *44-45 (N.D. Cal. Aug. 15, 2002) (stating that, “[if a person of ordinary skill in the art 26 can determine what the claim language means, but the specification does not show how to perform the invention, the claim may be invalid for lack of enablement, not for indefiniteness[;] [b]ecause 27 analysis of enablement focuses on the adequacy of the specification in teaching a person of 1 Holdings LLC v. AT&T Mobility LLC, 785 F.3d 616, 623 (Fed. Cir. 2015) (emphasis added; also 2 noting that “[a] microprocessor or general purpose computer lends sufficient structure only to 3 basic functions of a microprocessor” but “[a]ll other computer-implemented functions require 4 disclosure of an algorithm”); see also Function Media, L.L.C. v. Google Inc., 708 F.3d 1310, 1318 5 (Fed. Cir. 2013) (stating that “[i]t is well settled that ‘[s]imply disclosing software, . . . “without 6 providing some detail about the means to accomplish the function[,] is not enough”‘); Noah Sys., 7 Inc. v. Intuit, Inc., 675 F.3d 1302, 1313 (Fed. Cir. 2012) (stating that, “while ‘[i]t is certainly true 8 that the sufficiency of the disclosure of algorithmic structure must be judged in light of what one 9 of ordinary skill in the art would understand the disclosure to impart,’ in a situation in which the 10 specification discloses no algorithm, ‘[t]hat principle . . . has no application’”). 11 In Function Media, the Federal Circuit noted that the “‘specification can express the 12 algorithm in any understandable terms including as a mathematical formula, in prose, or as a flow 13 chart, or in any other manner that provides sufficient structure.’” Function Media, 708 F.3d at 14 1318. That being said, an algorithm is not sufficient if all that is does is simply state functionality 15 without explaining how the function is performed. See Blackboard, Inc. v. Desire2Learn, Inc., 16 574 F.3d 1371, 1384 (Fed. Cir. 2009) (stating that a sentence on which the plaintiff relied “merely 17 states that the access control manager enables different types of users to interact with the system in 18 a manner that preserves confidentiality (i.e., it works as intended)”; the “language ‘simply 19 describes the function to be performed’” and “says nothing about how the access control manager 20 ensures that those functions are performed,” and, “[as]s such, the language ‘describes an outcome, 21 not a means for achieving that outcome’”) (emphasis added). 22 In the instant case, the Court accepts, for purposes of this order, that the function of a 23 communication manager object is to exchange data with the communication components (as found 24 the PTAB during the inter partes review proceeding). See also Overby Decl. ¶ 27 (noting that the 25 PTAB concluded a communication manager object exchanges data with the communication 26 components). Nothing in the specification suggests this function is accomplished by anything 27 other than software performed by a general-purpose computer or microprocessor. The critical 1 function is achieved. The patent does not. The patent simply states functionality without 2 || explaining how the function is performed. See, e.g., note 4, supra. 3 The Court, therefore, concludes that the means-plus-function term “communication 4 || manager object” is indefinite and, accordingly, the ‘480 patent is invalid even under the clear-and- 5 || convincing standard.® 6 Il. CONCLUSION 7 For the foregoing reasons, the Court grants webinar’s motion for partial summary 8 || judgment on the claim for patent infringement. 9 This order disposes of Docket No. 70. 10 11 IT IS SO ORDERED. 12

13 Dated: October 16, 2023

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19 20 21 22 23 24 25 26 27 28 8 All independent claims of the ‘480 patent contain the term “communication manager object.”