ON24, Inc. v. webinar.net, Inc.

Background

ON24 sued webinar.net asserting four causes of action: infringement of ON24’s ’480 patent, interference with contractual relations between ON24 and its customers, unfair competition, and violation of the Lanham Act based on allegedly false or misleading representations about ON24. webinar.net moved for partial summary judgment only on the patent-infringement claim.

The ’480 patent concerns online communications applications. Its representative independent claim describes an audience computing device that uses an “application framework,” a “communication manager object,” communications components, and a presentation component. The claim requires the components to exchange data with the communication manager object during a presentation and requires the object to manage the presentation’s interface and display.

webinar.net argued that the ’480 patent was invalid because “communication manager object” was indefinite. ON24 disputed that the term was a means-plus-function term and relied in part on the patent specification and a declaration from its expert, Walter Overby.

Legal standard

Summary judgment is appropriate when there is no genuine dispute about a material fact and the moving party is entitled to judgment as a matter of law. Patent invalidity is an affirmative defense, and the party asserting invalidity must establish it by clear and convincing evidence.

A patent claim is indefinite when the claim, read with the patent’s specification and prosecution history, does not inform a skilled person with reasonable certainty about the scope of the invention. Under 35 U.S.C. § 112(f), a means-plus-function claim term is construed to cover the structure, material, or acts described in the specification that correspond to the claimed function, along with their equivalents. If the term is implemented through software on a general-purpose computer, the specification generally must disclose the algorithm that performs the claimed function.

Means-plus-function analysis

Because “communication manager object” does not include the word “means,” the court began with a presumption that it was not a means-plus-function term. That presumption could be overcome if webinar.net showed that the term did not convey sufficiently definite structure to a person of ordinary skill in the art.

The court accepted that the broader word “object” could refer to a type of software structure. But the relevant phrase was “communication manager object,” not merely “object.” The court found that Overby’s declaration did not establish that the full phrase had a commonly understood meaning identifying a particular structure. The declaration described the object’s functions, including managing interactions among components, but did not explain how those functions were achieved.

The court distinguished cases in which software terms conveyed structure because the evidence showed that conventional, off-the-shelf code or applications could perform the claimed functions. Here, Overby did not identify the communication manager object as off-the-shelf software or otherwise explain how a skilled person would implement it. The court therefore concluded that webinar.net had rebutted the presumption and that “communication manager object” was a means-plus-function term.

Indefiniteness and ruling

For purposes of the order, the court accepted that the claimed function was exchanging data with the communications components. It found that the patent did not disclose corresponding structure beyond software performed by a general-purpose computer or microprocessor. The patent described the object’s functionality but did not disclose an algorithm or otherwise explain how the function was performed.

The court held that the means-plus-function term “communication manager object” was indefinite. It consequently held that the ’480 patent was invalid, even under the clear-and-convincing-evidence standard.

The court granted webinar.net’s motion for partial summary judgment on the patent-infringement claim and stated that the order disposed of Docket No. 70. Judge Edward Chen signed the order on October 16, 2023.