United States Court of Appeals 

for the Federal Circuit ______________________ 

ELCOMMERCE.COM, INC.,

Plaintiff-Appellant,

v.

SAP AG AND SAP AMERICA, INC.,

Defendants-Appellees.

______________________ 

2011-1369

______________________ 

Appeal from the United States District Court for the 

Eastern District of Pennsylvania in No. 09-CV-4458, 

Judge Jan E. Dubois.

______________________ 

Decided: February 24, 2014 

______________________ 

CHRISTOPHER R. BENSON, Fulbright & Jaworski, 

L.L.P., of Austin, Texas, argued for plaintiff-appellant. 

With him on the brief were SHEILA KADURA, of Austin, 

Texas, and JONATHAN S. FRANKLIN, of Washington, DC. 

MICHAEL A. MORIN, Finnegan, Henderson, Farabow, 

Garrett & Dunner, LLP, of Washington, DC, argued for 

defendants-appellees. With him on the brief were J.

MICHAEL JAKES, NAVEEN MODI, and LUKE J. MCCAMMON, 

of Washington, DC; and JOSEPH E. PALYS, of Reston, 
2 ELCOMMERCE.COM v. SAP AG

Virginia. Of counsel on the brief was SAMIR N. PANDYA, 

SAP America, Inc., of Newtown Square, Pennsylvania. 

____________________ 

Before NEWMAN, PLAGER, and WALLACH, Circuit Judges. 

Opinion for the court filed by NEWMAN, Circuit Judge. 

Dissenting in part opinion filed by WALLACH, Circuit 

Judge.

NEWMAN, Circuit Judge. 

Elcommerce.com, Inc. is the owner of United States 

Patent No. 6,947,903 (“the ’903 patent”), directed to a 

system and method of monitoring a supply chain of components in order to coordinate and stabilize the supply of 

components from various producers. Elcommerce brought 

suit in the United States District Court for the Eastern 

District of Texas, charging SAP AG and SAP America, 

Inc. (collectively “SAP”) with patent infringement. SAP 

filed a declaratory judgment counterclaim that the ’903 

patent is invalid, unenforceable, and not infringed. On 

SAP’s motion, the district court transferred the case to the 

United States District Court for the Eastern District of 

Pennsylvania. Elcommerce objected to the transfer on 

jurisdictional and venue grounds, and on this appeal 

elcommerce requests that the Pennsylvania court’s judgment be voided and the case returned to Texas for trial. 

The Pennsylvania district court construed the claims

of the ’903 patent, and on this claim construction the 

court entered summary judgment that the asserted system claims 22–30, 32, 33 and 37 are invalid for indefiniteness under 35 U.S.C. §112 ¶2, based on failure to 

comply with the requirements of §112 ¶6. The parties 

stipulated that the district court’s claim construction 

precludes finding that SAP infringes any of the asserted

method claims 1, 3, 4, 12, 13, 17–21, 38, 43, 44, 47, 50, 53, 

or 54. Final judgment was entered of invalidity of the 
ELCOMMERCE.COM v. SAP AG 3

system claims and non-infringement of the method 

claims.1

On appeal by elcommerce, we affirm the district 

court’s construction of the ’903 patent’s claim terms

“independent supply chain sites,” “scanning for,” “detecting,” and “monitoring for changed supply-related data 

information.” On this ground, the parties’ stipulation of 

non-infringement of the method claims is affirmed.

For the system claims the ruling of invalidity is vacated, for the summary judgment was based on an incorrect evidentiary premise. SAP had incorrectly informed 

the district court that Federal Circuit precedent makes 

unnecessary consideration of evidence of the knowledge 

and understanding of the relevant technology by persons 

of skill in the field of the invention. Thus SAP declined to 

provide evidence of how such persons would view the 

description of “structure, materials, or acts” in the specification for performance of the several functions claimed in 

the form authorized by 35 U.S.C. §112 ¶6. On this absence of evidence, the district court held that every 

claimed function was devoid of support, and therefore that

every system claim is invalid on the ground of indefiniteness. Because invalidity must be proven by clear and 

convincing evidence, we vacate the court’s rulings with 

respect to the system claims, and remand for determination of validity on an appropriate evidentiary record and 

standard.

1 elcommerce.com, Inc. v. SAP AG, No. 09-4458, 

2011 WL 710487 (E.D. Pa. March 1, 2011) (herein “Op.”). 

 
4 ELCOMMERCE.COM v. SAP AG

I 

JURISDICTION AND VENUE

Soon after the filing of suit by elcommerce in the 

Eastern District of Texas, SAP moved under 28 U.S.C. 

§1404(a) for transfer to the Eastern District of Pennsylvania, on SAP’s statement that Pennsylvania is the 

headquarters location of SAP America and the location of 

its witnesses and documents. Elcommerce objected to the 

transfer, stating that it is the plaintiff’s prerogative to 

choose the forum, that §1404(a) favors keeping the action 

in Texas, that personal jurisdiction over SAP exists in 

Texas based on SAP’s commercial activities in Texas, and 

that the Eastern District of Pennsylvania lacks personal 

jurisdiction over elcommerce. The Texas district court 

granted the transfer.2

On arrival in the Eastern District of Pennsylvania, elcommerce again disputed the Pennsylvania court’s personal jurisdiction over it, and requested transfer back to 

Texas. The Pennsylvania court denied the request,3

stating that “[u]nder law-of-the-case principles, if the 

transferee court can find the transfer decision plausible, 

its jurisdictional inquiry is at an end,” quoting Christianson v. Colt Industries Operating Corp., 486 U.S. 800, 819 

(1988).

Elcommerce appeals the transfer, on the grounds that 

it is the defendant to SAP’s declaratory judgment counterclaims that were filed in Texas and included in the 

transfer to Pennsylvania, and that judgment cannot be 

2 elcommerce.com, Inc. v. SAP AG, No. 07-383 (E.D. 

Tex. Sept. 29, 2009) (granting transfer to Pennsylvania).

3 elcommerce.com, Inc. v. SAP AG, No. 09-4458, slip 

op. at 2 (E.D. Pa. Dec. 14, 2009) (denying return to Texas). 

 
ELCOMMERCE.COM v. SAP AG 5

entered against a defendant or its property over which the 

court does not have personal jurisdiction. Elcommerce 

states that it does not have minimum contacts with the 

Eastern District of Pennsylvania or with the state of 

Pennsylvania, and that minimum contacts are required 

for personal jurisdiction. Elcommerce cites International

Shoe Co. v. Washington, 326 U.S. 310 (1945), where the 

Court explained that “due process requires only that in 

order to subject a defendant to a judgment in personam, if 

he be not present within the territory of the forum, he 

have certain minimum contacts with it such that the 

maintenance of the suit does not offend ‘traditional notions of fair play and substantial justice.’” Id. at 316 

(quoting Milliken v. Meyer, 311 U.S. 457, 463 (1940)). 

Thus elcommerce argues that the judgment invalidating 

its patents via declaratory judgment counterclaim could 

not properly be decided in Pennsylvania. 

Elcommerce also stresses that as plaintiff it is entitled 

to its choice of forum, and states that Federal Circuit 

precedent in similar circumstances is explicitly contrary 

to the transfer. Thus elcommerce states that the Eastern 

District of Pennsylvania lacked jurisdiction to enter a 

binding judgment in this suit, and asks that the Pennsylvania judgment be vacated and the case returned to Texas 

for trial.

A 

SAP proposes first that this court need not be concerned with the question of personal jurisdiction over 

elcommerce in Pennsylvania, offering the theory that any 

transfer error is harmless because the dispositive issues 

on this appeal—claim construction and validity under 

§112—are questions of law that the Federal Circuit 

decides de novo. SAP states that it is irrelevant whether 

the appealed decision was rendered by a district court in 

Texas or in Pennsylvania, because on appeal the Federal 
6 ELCOMMERCE.COM v. SAP AG

Circuit decides these questions for itself, with no deference to the district court’s rulings. 

It is axiomatic that jurisdiction must be present in 

every tribunal, whether the issue is one of fact or law, and 

whatever the standard of appellate review. “ ‘Without 

jurisdiction the court cannot proceed at all in any cause’; 

it may not assume jurisdiction for the purpose of deciding 

the merits of the case.” Sinochem Int’l Co. v. Malaysia 

Int’l Shipping Corp., 549 U.S. 422, 431 (2007) (quoting 

Steel Co. v. Citizens for a Better Env’t, 523 U.S. 83, 94 

(1998)). If jurisdiction is absent in the district court its 

decision is void, for “[t]he requirement that jurisdiction be 

established as a threshold matter springs from the nature 

and limits of the judicial power of the United States and 

is inflexible and without exception.” Steel Co., 523 U.S. at 

94–95. 

A void decision cannot receive appellate review, even

when review is by de novo determination. There must be 

jurisdiction in the district court to reach an appealable 

judgment; SAP’s proposition of harmless error is meritless. 

B 

The transfer to Pennsylvania was founded on the 

statutory authorization of transfer of civil actions between 

federal district courts, on specified conditions: 

For the convenience of parties and witnesses, in 

the interest of justice, a district court may transfer any civil action to any other district or division 

where it might have been brought.

28 U.S.C. §1404(a) (1996). Absent consent, the transferee 

forum must be a court in which the action “might have 

been brought.” Hoffmann v. Blaski, 363 U.S. 335, 343–44 

(1960). Elcommerce agrees that it could have sued SAP in 
ELCOMMERCE.COM v. SAP AG 7

the Eastern District of Pennsylvania, but stresses that 

SAP could not have brought a declaratory judgment 

action against elcommerce in Pennsylvania.

Elcommerce states that the Pennsylvania judge erroneously concluded that because elcommerce was the 

plaintiff in the Texas action, personal jurisdiction over 

elcommerce in Pennsylvania is unnecessary in an action 

transferred under §1404(a). Elcommerce recognizes that 

as plaintiff in Texas it was subject to the Texas court’s

jurisdiction over any relevant counterclaims filed by the 

defendant, but argues that its voluntary submission to 

the jurisdiction of the Texas court does not carry over to 

an involuntary transfer to a different venue. See Lindahl 

v. Office of Pers. Mgmt., 470 U.S. 768, 793 n.30 (1985) 

(“venue considerations come into play only after jurisdiction has been established”). 

Elcommerce stresses that SAP’s response to the Texas 

complaint included declaratory judgment counterclaims, 

and argues that personal jurisdiction in Pennsylvania was

improper because a declaratory judgment action could not 

have been brought against elcommerce in Pennsylvania. 

Elcommerce states that without personal jurisdiction a 

court cannot enter a binding judgment against a defendant, and that it is the defendant to SAP’s declaratory 

judgment counterclaims. Thus elcommerce states that 

the Pennsylvania court did not have jurisdiction to render 

the decision here on appeal. 

Elcommerce argues that due process principles support its position, citing Burger King Corp. v. Rudzewicz, 

471 U.S. 462, 471–72 (1985) (“The Due Process Clause 

protects an individual’s liberty interest in not being 

subject to the binding judgment of a forum with which he 

has established no meaningful ‘contacts, ties, or relations.’”) (quoting International Shoe, 326 U.S. at 319). 

Elcommerce states that the Pennsylvania court did not 
8 ELCOMMERCE.COM v. SAP AG

have personal jurisdiction over elcommerce for resolution 

of the declaratory action, and could not declare the elcommerce patents invalid.

Elcommerce states that the entirety of the Texas action including the declaratory counterclaims could not 

have been transferred to Pennsylvania, and that since it 

is generally improper to transfer only part of a pending 

case, the entire transfer and the decision thereof are void. 

Elcommerce states that in Hildebrand v. Steck Manufacturing Co., Inc., 279 F.3d 1351 (Fed. Cir. 2002) this court’s 

holding involving claims and counterclaims supports the 

elcommerce position. SAP responds that Hildebrand is 

adequately distinguished on its facts.

In Hildebrand this court held that there was not personal jurisdiction over the defendant patentee in a declaratory judgment action filed by the purported infringer. 

Jurisdiction in that venue was not cured when the patentee later filed suit as plaintiff on the same patent in a 

different venue. Steck Manufacturing had filed a declaratory action against the patentee Hildebrand in the Southern District of Ohio, requesting declarations of noninfringement, patent invalidity, and tortious interference 

with contract. Nine days later Hildebrand filed an infringement suit against Steck in the District of Colorado. 

The Colorado court granted Steck’s motion to transfer the 

infringement suit to Ohio, citing the “first-filed” rule. 

Hildebrand refused to participate in Ohio, stating that the 

Ohio court lacked personal jurisdiction over it. The Ohio 

court then entered a default judgment against Hildebrand. 

On appeal to the Federal Circuit, Hildebrand argued 

that his suit as plaintiff in Colorado on the same subject 

matter did not impart or concede personal jurisdiction 

over Hildebrand as defendant in the previously filed Ohio 

action. This court agreed, held that the Ohio court lacked 
ELCOMMERCE.COM v. SAP AG 9

personal jurisdiction over Hildebrand, and vacated the 

Ohio judgment. The court reasoned that Hildebrand

could not be sued as defendant in Ohio because he had no 

minimum contacts with Ohio, and that Hildebrand’s 

subsequent suit as plaintiff in Colorado “do[es] not create 

a constitutionally adequate basis for personal jurisdiction” 

in Ohio. Id. at 1356. This court held that the Colorado 

court’s transfer to Ohio of the action filed by Hildebrand 

in Colorado did not cure the absence of personal jurisdiction over Hildebrand in Ohio.

Elcommerce argues that the jurisdictional posture in 

this case is analogous, and that Hildebrand established 

that it is improper to transfer an action from a forum that 

has voluntary personal jurisdiction over the plaintiff, to a 

forum that does not have either voluntary or actual 

personal jurisdiction when the plaintiff is a counterclaim 

defendant. Elcommerce states that Hildebrand requires 

that this court return the entire action to Texas, where 

the district court has jurisdiction of the claims and counterclaims filed by both sides. 

We conclude that Hildebrand supports the rulings of 

the Texas and Pennsylvania district courts. Jurisdiction 

is determined at the time the complaint is filed. In Hildebrand there was not personal jurisdiction over Hildebrand 

as defendant in the first-filed action in Ohio, and this flaw

was not cured by transfer to Ohio of Hildebrand’s laterfiled Colorado suit. Here, in the first-filed Texas case 

there was personal jurisdiction over both the plaintiff 

elcommerce and the defendant SAP, and elcommerce as 

plaintiff was subject to the declaratory counterclaims filed

by SAP in Texas. This jurisdiction was preserved when 

the entire action was transferred to Pennsylvania under 

§1404(a). 

Precedent supports the position that personal jurisdiction over the plaintiff, in the forum in which the plain-
10 ELCOMMERCE.COM v. SAP AG

tiff filed suit, is not lost when the entire case is transferred to a forum in which the plaintiff could have sued

this defendant. In In re Genentech, 566 F.3d 1338 (Fed. 

Cir. 2009) this court applied this principle to a foreign 

plaintiff and explained that “[t]here is no requirement 

under §1404(a) that a transferee court have jurisdiction 

over the plaintiff or that there be sufficient minimum

contacts with the plaintiff; there is only a requirement 

that the transferee court have jurisdiction over the defendants in the transferred complaint.” Id. at 1346.

In Genentech the patentee Sanofi, a company of Germany, filed suit against Genentech in a Texas district 

court. Genentech requested that the suit be transferred

to the Northern District of California. Sanofi argued that 

as plaintiff it had the right to choose the forum, that 

personal jurisdiction over Genentech in the Texas court 

was not disputed, and that the California court would be 

obliged to waste judicial resources to determine if it 

possessed personal jurisdiction over the German plaintiff. 

Genentech in turn argued the convenience to it and its 

witnesses of the California venue. The Texas district 

court granted the transfer and this court affirmed, observing that California is “the clearly more convenient venue.” 

Id. at 1348.

Both Hildebrand and Genentech support the district 

courts’ rulings on the transfer from Texas to Pennsylvania, for the transfer is apt on venue considerations, and 

the Pennsylvania court possesses jurisdiction to decide

the issues raised by the complaint, including the defenses 

and declaratory counterclaims. We discern no abuse of 

discretionary authority in the transfer.
ELCOMMERCE.COM v. SAP AG 11

II

THE METHOD CLAIMS

The district court construed various terms in the 

method and system claims. The parties stipulated that on 

the district court’s claim construction SAP does not infringe any of the asserted method claims.

The ’903 patent’s method claims set forth steps in 

monitoring a supply chain of components used in manufacture. The monitoring is for the purpose of facilitating 

and coordinating the supply of components provided by

separate entities. The ’903 patent explains that supply 

problems arise in various ways, such as when entities in 

the chain maintain their supply-related data in different 

or uncoordinated formats, and are not readily informed of 

changes in utilization or need. 

The ’903 patent includes claims to a method that collects information from each supply site, places the information in a common format, makes the coordinated 

supply information available to the entities in the supply 

chain, and detects and alerts the entities to any supply 

problem. Claim 1 outlines the steps of the method as 

follows, with the claim construction terms on appeal

shown in boldface: 

1. A method of monitoring supply chain activity, 

comprising:

scanning for changed supply-related data at

independent supply chain sites within the 

supply chain;

extracting the supply-related data at the independent supply chain, the data being maintained in plural formats at the supply chain sites, 

where each of the supply chain sites represents 

an independent entity in the supply chain;
12 ELCOMMERCE.COM v. SAP AG

translating the extracted data into a common 

format;

uploading the extracted data from each supply chain site to a data collection site, the data collection site collecting the extracted data; and

upon a request from a user associated with 

one of the supply chain sites, formatting, at the 

data collection site, a portion of the collected data, 

retrieved from one of the supply chain sites other 

than the site of the user, into one of a plurality of 

views, responsive to criteria selected by the user, 

for presentation to the user, the portion of formatted data being dependent on access rights granted 

to the user’s supply chain site, and publishing the 

formatted data view to the user’s supply chain 

site;

at the data collection site, monitoring inbound data from multiple supply chain sites;

detecting a problem condition if there is a 

surplus or shortage in the collected data retrieved 

from at least one of the supply chain sites other 

than the site of the user; and

responding to the problem condition by asserting an alert to the user, where the alert indicates 

a problem condition associated with at least one of 

the supply chain sites other than the site of the 

user.

The district court conducted a Markman hearing, and 

construed various claim terms in a manner whereby, the 

parties stipulated, method claims 1, 3, 4, 12, 13, 17–21, 

38, 43, 44, 47, 50, 53, and 54 do not cover SAP’s activities, 

thus negating infringement of these claims. Elcommerce

appeals the construction of the following terms:
ELCOMMERCE.COM v. SAP AG 13

“Independent supply chain sites” 

The district court construed “independent supply 

chain sites” to mean “a supply chain entity that is not 

subject to the control or authority of, and is unrelated to, 

each other supply chain entity.” Op. at 8. The court 

observed that elcommerce invoked this construction of the 

term “independent” in reexamination proceedings at the 

PTO to distinguish the ’903 patent from prior art systems 

where the “data warehouses are for companies that are 

related to each other.” Op. at 7. Thus the court ruled

that “‘independent sites’ must be unrelated and not 

subject to another’s control,” reasoning that “otherwise 

getting each site to coordinate its ‘business method and 

database’ with those of the other sites would not present a 

challenge requiring use of the invention.” Op. at 6.

Elcommerce argues that the term “independent supply chain sites” requires only that each supply chain site 

is separate, and that the sites need not be totally independent of each other. Elcommerce states that the plain 

meaning of this term is sufficient and that no construction 

is necessary, or, in the alternative, that the term means 

“a separate entity within the supply chain.” If the sites 

are separate but not totally independent, elcommerce 

argues that SAP’s practices are covered by this term.

Elcommerce states that the district court gave this 

term an inappropriately narrow construction, by incorporating the concepts of “control or authority” and “unrelated” into the meaning of “independent.” Elcommerce

argues that these concepts are not stated in the specification or prosecution history, and that the district court 

erred when it reasoned that the site entities must not be 

under the same “control or authority” in order to be 

independent. Elcommerce argues that the specification 

shows that “independent” simply refers to separate entities in a supply chain, and that it is irrelevant whether 
14 ELCOMMERCE.COM v. SAP AG

there is common control of more than one site. Elcommerce points to the Summary of the Invention, which 

states that “[s]upply chain sites can include any or all of 

contract managers (CMs), vendors, distributors and an 

original equipment manufacturer (OEM).” ’903 patent,

col.3, ll.25–27. Thus elcommerce argues that the specification requires only that the supply chain sites are “separate,” not that they are unrelated.

Elcommerce points out that “independent” was added 

to the ’903 claims in order to distinguish the Huang 

reference, which shows an internal/single-entity supply 

chain. Elcommerce argues that “as long as the supplier is 

a separate entity—regardless of whether it is or is not 

subject to the control or authority of another supply chain 

site—the distinction drawn between the ’903 patent and 

Huang is satisfied.” Elcommerce Br. 56. Elcommerce

cites Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 

1314, 1325–26 (Fed. Cir. 2003) for the proposition that

prosecution disclaimer requires that the alleged disavowal is both clear and unmistakable, and argues that the 

district court’s reliance on prosecution argument to support the court’s requirement that the supply chain sites 

are “unrelated” to each other, goes beyond the distinction 

from the Huang reference that was made during prosecution.

We conclude that the district court correctly construed 

“independent supply chain sites” as requiring unrelated 

sites. This construction is consistent with the specification and the prosecution history, where elcommerce 

distinguished the Huang reference by stating: “With prior 

systems, independent entities are not able to easily and 

quickly share information with each other. Typically, 

their data is proprietary, and independent entities, such 

as corporations, do not want to share their proprietary 

information with each other.” Letter, U.S. Patent App. 
ELCOMMERCE.COM v. SAP AG 15

09/546,347 at 17, July 27, 2004. The specification states

that the invention overcomes problems encountered with 

independent manufacturers and vendors having distinct 

business methods and databases, by providing a system

and method that receive data from independent sources 

and place the data in a common format. 

The district court’s ruling that the entities in the supply chain must be unrelated and not merely separate is 

the most reasonable reading of the claims in light of the 

specification and the prosecution history. See Renishaw 

PLC v. Marposs Società per Azioni, 158 F.3d 1243, 1250 

(Fed. Cir. 1998) (“Ultimately, the interpretation to be 

given a term can only be determined and confirmed with a 

full understanding of what the inventors actually invented and intended to envelop with the claim.”). The district 

court’s construction of “independent supply chain sites,” 

as requiring unrelated supply sites is affirmed.

“Monitoring,” “scanning,” and “detecting” at 

“each” independent supply chain site

The district court construed the terms “monitoring,”

“scanning,” and “detecting” as requiring that these functions must be performed at “each” independent supply 

chain site. Elcommerce argues that this construction 

unduly restricts the fair scope of these terms in the 

broader claims such as method claim 1 and system claim 

37, for other claims recite specifically the location of the 

detecting or monitoring activity. For example, claim 50 

recites “[a] method of monitoring, at a data collection 

center, . . . the method comprising: scanning for changed 

supply-related information at independent supply chain 

sites.” Elcommerce argues that because claim 50 explicitly states that the scanning is performed at a data collection center, the district court’s construction that all of the 

claims require that the scanning is performed at each 

independent supply chain site must be wrong.
16 ELCOMMERCE.COM v. SAP AG

Elcommerce points out that the ’903 patent specifies 

the location, when a claimed step takes place at a specific 

location. For example, claim 37 states that the “means for 

extracting” is located “at each supply chain site,” the 

“means for formatting” is located “at the data collection 

site,” and the “means for monitoring” is located “at the 

data collection site.” Elcommerce thus argues that the 

absence of specific locations in other claims means that 

those claims are not similarly restricted, and that the 

district court’s narrow construction of these terms for all 

claims cannot be correct.

SAP responds that the district court’s claim construction is required by the specification and prosecution 

history. Claim 1 states “scanning for changed supplyrelated data at independent supply chain sites within the 

supply chain”; claim 22 states “a plurality of independent 

supply chain sites . . . , each supply chain site . . . comprising: a data transfer engine (DTE) which detects changed 

supply-related data”; claim 37 states a “means for monitoring changed supply-related data at independent supply 

chain sites within the supply chain”; claim 38 states 

“installing a data transfer engine (DTE) in the first supply chain site . . . , in response to detecting changes in the 

respective proprietary information at the first supply 

chain site”; claim 50 states “scanning for changed supplyrelated information at independent supply chain sites

within the supply chain”; claim 53 states “at each supply 

chain site: . . . upon a triggering event in response to 

detecting changes, forwarding . . .”; claim 54 states “at the 

supply chain sites, monitoring the proprietary information to detect any changes.” Thus SAP argues, and the 

district court held, that all of the claims, broad and narrow, require detecting and monitoring at each supply 

chain site.
ELCOMMERCE.COM v. SAP AG 17

The ’903 specification is in accord with the district 

court’s construction. The Summary of the Invention 

states that a “data transfer engine” is installed at each 

site:

The present invention eliminates much of the confusion which results from redesigning one or more 

complex legacy systems. Instead, legacy systems 

are left intact, and a data transfer engine (‘DTE’) 

is installed at each site. The DTE monitors the 

local system continuously, and takes whatever information is available.

’903 patent, col.1, ll.61–66. The district court found that 

“[t]he Summary of the Invention, which addresses the 

patent as a whole, makes clear that these functions take 

place at each independent supply chain site.” Op. at 12.

We affirm the district court’s conclusion that the 

scanning, detecting, and monitoring are performed at 

each supply chain site, and affirm the court’s construction 

of “independent supply chain sites,” “scanning for,” “detecting,” and “monitoring” for changed supply-related 

information. On the district court’s claim construction, 

the parties stipulated that SAP does not infringe method 

claims 1, 3, 4, 12, 13, 17–21, 38, 43, 44, 47, 50, 53, or 54 of 

the ’903 patent. The judgment of non-infringement of 

these claims is affirmed.

III

THE SYSTEM CLAIMS

The district court held system claims 22–30, 32, 33 

and 37 invalid for failure to comply with 35 U.S.C. §112 

¶2 and ¶6: 

§112 ¶2. The specification shall conclude with one 

or more claims particularly pointing out and dis-
18 ELCOMMERCE.COM v. SAP AG

tinctly claiming the subject matter which the applicant regards as his invention. 

§112 ¶6. An element in a claim for a combination 

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. 

The district court held that all of the “means” terms in the

system claims are inadequately supported by structure in 

the specification as required by §112 ¶6, and thus that 

the system claims are invalid for indefiniteness under 

§112 ¶2.4 Claim 37 is representative of the system 

claims, all of which employ the means-plus-function form 

authorized by §112 ¶6: 

37. A system for monitoring supply chain activity comprising a plurality of supply chain sites, 

comprising:

means for monitoring changed supply-related 

data at independent supply chain sites within the 

supply chain;

means for extracting, at each supply chain 

site, the supply-related data to be monitored, 

wherein the data is maintained in plural formats 

located among the supply chain sites, at least one 

of the supply chain sites corresponding to an in4 Paragraphs 2 and 6 of 35 U.S.C. §112 were replaced with newly designated §§112(b) and 112(f) respectively when §4(c) of the Leahy-Smith American Invents 

Act (“AIA”), Pub. L. No. 112–29, took effect on September 

16, 2012. Because this case was filed before that date, we 

will refer to the pre-AIA version of §112.

 
ELCOMMERCE.COM v. SAP AG 19

dependent entity in the supply chain, being independent of another supply chain site;

means for translating the data to a common

format;

means for uploading and collecting, from each 

supply chain site, the extracted data to a data collection site;

means for formatting, at the data collection 

site, a portion of the collected data, retrieved from 

at least one of the supply chain sites other than 

the site of the user, into one of a plurality of 

views, responsive to criteria selected by a user associated with a supply chain site, for presentation 

to the user, the portion of formatted data being 

dependent on access rights granted to the user’s 

supply chain site;

means for publishing the formatted data view 

to the user’s supply chain site;

means for monitoring, at the data collection 

site, inbound data from multiple supply chain 

sites;

means for detecting a problem condition if 

there is a supply chain surplus or shortage detected in the collected data retrieved from at least one 

of the supply chain sites other than the site of the 

user; and

means for responding to the problem condition 

by asserting an alert, where the alert indicates a 

problem condition associated with at least one of 

the supply chain sites other than the site of the 

user.

Other claims contain additional functional terms claimed 

as “means.” Elcommerce argues that the district court 

erred in its interpretation and application of section 112, 

and that the criteria for §112 ¶6 and ¶2 are met. In 

Atmel Corp. v. Information Storage Devices, Inc., 198 F.3d 
20 ELCOMMERCE.COM v. SAP AG

1374, 1382 (Fed. Cir. 1999) the court explained that “[a]ll 

one needs to do in order to obtain the benefit of that 

claiming device [§112 ¶6] is to recite some structure

corresponding to the means in the specification, as the 

statute states, so that one can readily ascertain what the 

claim means and comply with the particularity requirement of ¶2.”

Precedent elaborates that “[u]nder 35 U.S.C. § 112 ¶2 

and ¶6, therefore, ‘a means-plus-function clause is indefinite if a person of ordinary skill in the art would be unable to recognize the structure in the specification and 

associate it with the corresponding function in the claim.’” 

Noah Sys., Inc. v. Intuit Inc., 675 F.3d 1302, 1312 (Fed. 

Cir. 2012) (quoting AllVoice Computing PLC v. Nuance 

Commc’ns, Inc., 504 F.3d 1236, 1241 (Fed. Cir. 2007)). 

“The amount of detail that must be included in the specification depends on the subject matter that is described 

and its role in the invention as a whole, in view of the 

existing knowledge in the field of the invention.” Typhoon 

Touch Techs., Inc. v. Dell, Inc., 659 F.3d 1376, 1385 (Fed. 

Cir. 2011). Elcommerce stresses the continuing references to “the existing knowledge in the field of the invention” and “the person of ordinary skill” as the foundation 

for such determinations. 

SAP argued at the Markman hearing that the meansplus-function terms in the ’903 patent do not have supporting “structure or acts” in the specification, and argued 

that since such support is absent, SAP could satisfy its 

burden on indefiniteness without expert testimony or 

other evidence of the existing knowledge in the field of the 

invention. SAP urged that Federal Circuit precedent does 

“not require” such evidence, citing the statement in Default Proof Credit Card System, Inc. v. Home Depot U.S.A, 

Inc., 412 F.3d 1291, 1302 (Fed. Cir. 2005), that “the 
ELCOMMERCE.COM v. SAP AG 21

testimony of one of skill in the art cannot supplant the 

total absence of structure from the specification.”

Elcommerce in turn argued that determination of the 

adequacy of the supporting structure or acts is made from 

the viewpoint of persons of skill in the field of the invention, and that evidence of how such persons would view 

the description should be presented to the court. Elcommerce pointed to the extensive precedent in which the 

knowledge of persons skilled in the field was considered. 

In Telcordia Technologies, Inc. v. Cisco Systems, Inc., 612 

F.3d 1365, 1377 (Fed. Cir. 2010) the court referred to 

expert testimony that an “ordinary artisan would have 

recognized the controller as an electronic device with a 

known structure.” In Technology Licensing Corp. v. 

Videotek, Inc., 545 F.3d 1316, 1338–39 (Fed. Cir. 2008) 

the court referred to expert testimony that “technology to 

perform the claimed function was available at the relevant time and would have been known to a person skilled 

in the art.” See also Typhoon Touch, 659 F.3d at 1385 

(“The defendants have directed us to no evidence that a 

programmer of ordinary skill in the field would not understand how to implement this function.”). 

During the Markman hearing the district court persistently asked for such evidence:

THE COURT: Well, what evidence is there of

what a person of ordinary skill in the art would 

understand the structure as defined in the patent 

to be, what evidence is there of that?

SAP: Your Honor, we haven’t submitted a declaration or separate evidence from somebody of ordinary skill in the art who says, I read the patent 

and I don’t see any structure. We’re actually not 

required to do that and, under the case law, the 

Federal Circuit’s case law, as well as other cases 
22 ELCOMMERCE.COM v. SAP AG

interpreting it, that’s not a requirement. We can 

simply point to the absence of structure and, if it’s 

not there, it’s not there.

Transcript of Markman Hearing at 214, elcommerce.com, 

Inc. v. SAP AG, 2011 WL 710487 (E.D. Pa. March 1, 2011) 

(No. 61). 

SAP persisted in the position that Federal Circuit 

precedent does “not require” evidence of how a person of 

ordinary skill would understand the patent. The record 

shows the judge’s concern with this decisional approach to 

complex technology: 

THE COURT: How am I to determine what one of 

ordinary skill in the art would think?

SAP: Well, your Honor, that’s what I’m here to do 

is to try to convince you that all those things Mr. 

Benson pointed to, it’s not structure. He’s simply 

pointing to phrases in the patent that repeat the 

function and simply repeating the function and 

drawing a box around it doesn’t convert it into 

structure.

Markman Tr., at 215. 

This inquiry by the court continued throughout the 

Markman hearing. SAP presented only attorney argument concerning the structure and acts set forth in the 

patent, and elcommerce stressed that SAP bears the 

burden of proving invalidity of duly granted claims: 

ELCOMMERCE: So, when SAP comes up here, 

they have to show you that one of ordinary skill in 

the art would not understand things like the DTE 

or the DCS or whatever structure we point to, 

would not be understood by one of ordinary skill 

in the art to perform the particular function. And 

they have presented zero evidence about how one 
ELCOMMERCE.COM v. SAP AG 23

of ordinary skill in the art would view what we’ve 

shown.

.... 

THE COURT: But, how do I determine what is 

understood by one skilled in the art?

ELCOMMERCE: You’d probably have to get 

somebody up in the box, that’s the witness box, 

raise their right hand and testify one way or another. That’s probably, that’s the only way that I 

know of doing this. To come in and just have a 

lawyer argue it, is not enough. This is to be determined in view of one of ordinary skill in the 

art. They have not submitted any declarations of 

any experts. They haven’t submitted declarations 

of one of ordinary skill in the art.

Markman Tr., at 187–89. 

Elcommerce pointed out to the court that during the 

examination and two reexaminations of the ’903 patent, 

no issue was raised by the PTO, as the expert agency, as 

to whether the specification met the requirements of 

section 112. The PTO examination guidelines instruct 

that the analysis for §112 ¶6 is made from the viewpoint 

of “those skilled in the art”; the Manual of Patent Examining Procedure states:

The disclosure of the structure (or material or 

acts) may be implicit or inherent in the specification if it would have been clear to those skilled in 

the art what structure (or material or acts) corresponds to the means (or step)-plus-function claim 

limitation.

MPEP §2181(II)(A) (8th ed. 2001).
24 ELCOMMERCE.COM v. SAP AG

In Atmel Corp., 198 F.3d at 1382, the court explained 

that section 112 does not require the drafter “to encumber 

the specification” with information known to a person of 

skill in the field of the invention; nor does section 112 

require that the specification reproduce information 

routinely possessed by persons in the field of the invention. See Creo Prods., Inc. v. Presstek, Inc., 305 F.3d 1337, 

1347 (Fed. Cir. 2002) (“To the extent that [Appellant] 

contends that additional structure is required for completely performing the function of ‘rotating each cylinder,’ 

we consider such structure to be implicit in the disclosure 

of the ’368 patent.”).

This court has “noted that ‘typically’ expert testimony 

will be necessary in cases involving complex technology.” 

Centricut, LLC v. Esab Grp., Inc., 390 F.3d 1361, 1370

(Fed. Cir. 2004) (quoting Schumer v. Lab. Computer Sys., 

Inc., 308 F.3d 1304, 1315 (Fed. Cir. 2002)). However, SAP

apparently persuaded the district court (and our colleague 

in dissent) that no evidence of the understanding and 

knowledge of persons of skill in the field need be presented or indeed would be useful even if the trial court 

thought otherwise. 

Having been led into error, the district court further 

erred by ignoring the protocols of claims for computerimplemented systems set forth in Finisar Corp. v. DirecTV Group, Inc., 523 F.3d 1323, 1340 (Fed. Cir. 2008)

(the patent may describe the system “in any understandable terms including as a mathematical formula, in prose, 

or as a flow chart, or in any other manner that provides 

sufficient structure”). This led the district court to overlook or reject elcommerce’s standard use of prose, diagrams, and flow charts.

The court explained in Finisar that the patent must

describe sufficient structure or acts whereby a person of 

ordinary skill in the field could perform the specified 
ELCOMMERCE.COM v. SAP AG 25

function without undue experimentation. Id. The court 

explained that the patent need not include information 

and knowledge possessed by persons of ordinary skill in 

the field of the invention, id., and that when the structure

or acts that perform the function “would be ‘well within 

the skill of persons of ordinary skill in the art,’ such 

functional-type block diagrams may be acceptable and, in 

fact, preferable if they serve in conjunction with the rest 

of the specification to enable a person skilled in the art to 

make such a selection and practice the claimed invention 

with only a reasonable degree of routine experimentation.” In re Ghiron, 442 F.2d 985, 991 (CCPA 1971). 

However, despite page-after-page of text and flow-charts 

and block diagrams illustrating supporting structure, the 

district court invalidated all of the claims that were 

written in terms of §112 ¶6.

Elcommerce points to the lengthy description of performance of the functions of the elcommerce system. The 

’903 patent provides over eight columns of “Detailed 

Description of the Invention,” with frequent references to 

the twenty-four pages of graphs and diagrams. For 

example, for the term “means for monitoring changed 

supply-related data at independent supply chain sites 

within the supply chain,” elcommerce points to the description of the data transfer engine, such as: the DTE 

“monitors the local system continuously, and takes whatever information is available,” ’903 patent, col.1, ll.64–66; 

“[i]n one embodiment, the DTE looks for changes to data 

and uploads new data to the data collection site . . . upon 

finding a change,” id. at col.5, ll.62–64; “[t]he DTE takes 

data in any size or format, including various databases 24 

and/or spreadsheets 22 [numbers from the flowcharts] 

and/or text files such as ASCII files, and corrects, translates and formats the data into ‘clean’ data,” id. at col.5, 

ll.59–64; “[t]his process . . . can be performed regularly, 

upon the expiration of the predetermined time period or, 
26 ELCOMMERCE.COM v. SAP AG

for example, when a change in the data is detected at the 

supply chain site,” id. at col.6, ll.44–48; and intervening 

text. Elcommerce states, and SAP does not dispute, that 

these acts described in the specification would be understood and do not require undue experimentation.

As another example, for the claim term “means for 

formatting,” the specification states that “[a] publisher 36 

receives query requests form the various sites 19” and 

“formats and publishes the relevant supply-chain data to 

the requesting site,” id. at col.6, ll.18–23, and describes 

several ways by which the publisher performs this function, e.g., ’903 patent, col.3, ll.35–39 (“An analysis report 

is generated responsive to report selection by a user. The 

generated report is provided, responsive to user selection 

of report destinations, by emailing, printing, storing as a 

file or displaying on a monitor or a screen, the report.”); 

id. at col.10, ll.59–67 (“A selected report can be sent to the 

screen, to a printer, to a file, or to a person via email, by 

selecting the respective button 272, 274, 280, 286.” (referring to the flowchart)). The patent explains that the 

formatting depends on the selection of the user, e.g., ’903 

patent at col.3, ll.40–42 (“Data is displayed in a window at 

a site’s display according to a category selected by a user 

at the site . . .”). The patent includes specific illustrations 

of formatting, such as:

“From page” and “To” fields 276, 278 allow the 

printing of only selected pages. File Name and 

File Type fields 284, 288 allow the designated report to be named and saved in a variety of formats. To, cc:, Subject and message fields, 288, 

290, 292 and 294 respectively, allow the user to 

specify recipients of the report, and to add a subject and remarks.
ELCOMMERCE.COM v. SAP AG 27

Id. at col.10, ll.59–67. The patent presents screen shots of 

formatted data in Figures 2–11D; for example, Figure 3A 

shows:

Despite this description in the patent, the district 

court ruled that the patent is “totally silent” as to the 

disclosure of “structure and acts” in performance of all of 

the functions.5

5 Our colleague in dissent argues that these descriptions of structure are not an “algorithm” for the 

purposes of §112 ¶6. The usage “algorithm” has indeed 

become patent jargon, but it does not convert the established description requirements into the need for mathematical equations or software programs. The court has 

reaffirmed that §112 ¶6 can be met by description in the 

form of “a mathematical formula, in prose, as a flow chart, 

or in any other manner that provides structure,” Finisar, 

523 F.3d at 1340. The usage “algorithm” does not add a 

new requirement to description under §112 ¶6. Nor do we 

 
28 ELCOMMERCE.COM v. SAP AG

SAP did not present evidence regarding the 

knowledge of persons of skill in the field of the invention. 

The district court received no evidence on whether such 

persons would “ ‘know and understand what structure 

corresponds to the means limitation.’ ” Finisar, 523 F.3d 

at 1340 (quoting Biomedino, LLC v. Waters Techs. Corp., 

490 F.3d 946, 949-50 (Fed. Cir. 2007)). However, 

“[w]hether a patent adequately sets forth structure corresponding to a claimed function necessitates consideration 

of the disclosure of the specification from the viewpoint of 

one skilled in the art.” Intellectual Prop. Dev., Inc. v. UAColumbia Cablevision of Westchester, Inc., 336 F.3d 1308, 

1319 (Fed. Cir. 2003). This viewpoint was withheld from 

the district court.

The burden was on SAP to prove by clear and convincing evidence that a person of ordinary skill in the field of 

the invention would be unable to recognize supporting

structure and acts in the written description and associate it with the corresponding function in the claim. See 

TecSec, Inc. v. Int’l Bus. Machs. Corp., 731 F.3d 1336, 

1349 (Fed. Cir. 2013) (“The party alleging that the specification fails to disclose sufficient corresponding structure 

must make that showing by clear and convincing evidence.”). While “the person of ordinary skill in the art” is 

a legal construct, like “the reasonable man,” and claim 

construction is ultimately a matter for the judges, it 

cannot be assumed that judges are persons of ordinary 

skill in all technological arts. 

Nor can it be assumed that, without evidence, a general purpose judge could ascertain the position of persons

of skill in the art and conclude that there is not a shred of 

share our colleague’s view that this court should perform 

the analysis, exercising our own expertise, in the absence 

of evidence and expert guidance.

 
ELCOMMERCE.COM v. SAP AG 29

support for any of the eleven interrelated means-plusfunction claim limitations, as argued by SAP. The district

court rightly was concerned about what a person of skill 

in the art might make of the lengthy written description 

and flow-charts and the multiple claimed functions. The 

judge repeatedly asked for evidence of what such a person 

would understand in this particular setting. Instead of 

evidence, SAP submitted only attorney argument. 

The district court accepted SAP’s position that no external evidence was “required” and could be relied upon to 

show how a person of ordinary skill would understand the 

descriptive text and flowcharts and diagrams in the 

patent. However, the adequacy of a particular description 

is a case-specific conclusion, not an all-purpose rule of 

law. Findings as to what is known, what is understood,

and what is sufficient, must be based on evidence. 

Without evidence, ordinarily neither the district court 

nor this court can decide whether, for a specific function, 

the description in the specification is adequate from the 

viewpoint of a person of ordinary skill in the field of the 

invention. We do not of course hold that expert testimony 

will always be needed for every situation; but we do hold 

that there is no Federal Circuit or other prohibition on 

such expertise. See Daubert v. Merrell Dow Pharm., Inc., 

509 U.S. 579 (1993). The district court persistently asked 

for evidence and was given none. Without more SAP 

cannot overcome the presumption of patent validity.

We conclude that the district court erred in granting 

summary judgment without a proper evidentiary basis for 

its conclusion. The burden was on SAP to prove its case, 

and in the absence of evidence provided by technical 

experts who meet the Daubert criteria there is a failure of 

proof. Attorney argument is not evidence. We vacate the 

district court’s rulings on the system claims, and remand 
30 ELCOMMERCE.COM v. SAP AG

for application of appropriate evidentiary standards and 

judicial procedures. 

AFFIRMED IN PART, VACATED IN PART, AND

REMANDED

Each party shall bear its costs.
United States Court of Appeals 

for the Federal Circuit ______________________ 

ELCOMMERCE.COM, INC.,

Plaintiff-Appellant,

v.

SAP AG AND SAP AMERICA, INC.,

Defendants-Appellees.

______________________ 

2011-1369

______________________ 

Appeal from the United States District Court for the 

Eastern District of Pennsylvania in case no. 09-CV-4458, 

Judge Jan E. Dubois.

______________________ 

WALLACH, Circuit Judge, dissenting-in-part. 

I join the majority’s well-reasoned holdings on jurisdiction, venue, and claim construction. I agree that the 

Eastern District of Pennsylvania properly exercised 

jurisdiction over the transferred case and that the district 

court correctly construed the disputed terms in the method claims. 

I depart, however, from the majority’s decision to vacate the district court’s indefiniteness holdings. In holding that SAP was required to provide expert testimony to 

prove indefiniteness, the majority contradicts Noah 

Systems, Inc. v. Intuit Inc., 675 F.3d 1302 (Fed. Cir. 2012), 

where this court affirmed the exclusion of expert testimony from the indefiniteness inquiry when there was a total 
2 ELCOMMERCE.COM v. SAP AG

absence of corresponding structure. As in Noah, the 

asserted means-plus-function claims in this case are 

directed to a special-purpose computer and thus require a 

corresponding algorithm in the specification. As in Noah, 

no algorithm is disclosed. Such “total absence of structure” renders the claims invalid for indefiniteness, and 

expert testimony is neither required nor permitted to 

supply the absent structure. Default Proof Credit Card 

Sys., Inc. v. Home Depot U.S.A., Inc., 412 F.3d 1291, 1302 

(Fed. Cir. 2005). 

I.

The system claims at issue contain multiple meansplus-function terms that are implemented in software. 

Means-plus-function terms are “construed to cover the 

corresponding structure, material, or acts described in the 

specification and equivalents thereof,” 35 U.S.C. § 112 

¶ 6, and the absence of adequate corresponding structure 

renders the claim indefinite under § 112 ¶ 2. In cases 

such as this one, where the means-plus-function term is 

implemented in software, the corresponding structure “is 

the algorithm disclosed in the specification.” Harris Corp. 

v. Ericsson Inc., 417 F.3d 1241, 1249 (Fed. Cir. 2005). 

The issue in this case is whether expert testimony is 

required to prove indefiniteness of a means-plus-function 

term when the specification contains no corresponding 

structure. This court answered “no” in Noah, explaining

that expert testimony is not required where the specification contains no algorithm corresponding to each recited 

function. Noah, 675 F.3d at 1313, 1318–19. When there 

is an identifiable algorithm, however, expert testimony 

may be helpful in determining whether the algorithm is 

adequate corresponding structure in the view of a skilled 

artisan. Id. at 1313. 
ELCOMMERCE.COM v. SAP AG 3

The district court properly applied this rubric, holding 

that “elcommerce has failed to describe structure at all,” 

so “there is no need for SAP to introduce evidence, such as 

expert testimony, about whether one skilled in the art 

would perceive the description sufficiently definite to 

satisfy the dictates of 35 U.S.C. § 112 ¶ 6.” elcommerce.com, Inc. v. SAP AG, No. 09-4458, 2011 WL 710487, 

at *13 (E.D. Pa. Mar. 1, 2011) (“Claim Construction Op.”) 

(citing Default Proof, 412 F.3d at 1302). The majority 

holds the district court “erred in granting summary 

judgment without a proper evidentiary basis for its conclusion,” Majority Op. at 29, but does not identify the 

necessary algorithms for each of the recited means-plusfunction elements. Nor does it identify any factual dispute, instead focusing on “the absence” of expert testimony. Id. It is questionable whether the absence of evidence 

can create a disputed question of material fact necessary 

to deny summary judgment. See Fed. R. Civ. P. 56(a). 

Even more importantly, requiring expert testimony in 

this case contradicts relevant precedent that prohibits 

reliance on such testimony when there is a “total absence 

of structure” from the specification. Noah, 675 F.3d at 

1313 (the absence of an algorithm results in the “total 

omission of structure”); Default Proof, 412 F.3d at 1302 

(“[T]he testimony of one of ordinary skill in the art cannot 

supplant the total absence of structure from the specification.”). Contrary to Noah, which determined the absence 

of an algorithm without expert testimony, the majority 

states it is not the role of this court to determine the 

presence or absence of an algorithm without “evidence 

and expert guidance.” Majority Op. at 28 n.5. 

There can be no doubt that the absence of expert testimony is the sole basis for the majority’s holding. To the 

extent the majority “hold[s] that there is no Federal 

Circuit or other prohibition on expertise,” id. at 29 (citing 

Daubert v. Merrell Dow Pharm., Inc., 509 U.S. 579 
4 ELCOMMERCE.COM v. SAP AG

(1993)), that proposition is plainly correct, but is not at 

issue in this case. The district court did not exclude any 

expert testimony, because none was proffered by either 

party. 

Nor does the majority identify algorithms corresponding to each of the claimed functions, so that cannot be the 

basis for its holding either. It cites generally to “pageafter-page of text and flow-charts and block diagrams 

illustrating supporting structure,” id. at 25, but considers 

only two of the eleven means-plus-function terms, see id.

at 25–27. It completely disregards the remaining seven 

terms in claim 37, and the term in independent claim 22, 

on which claims 23–30, 32, and 33 depend. Even one 

indefinite term renders a claim invalid, and the majority’s 

incomplete analysis necessarily assumes the “total absence of structure” for at least one term in each asserted 

claim. The majority agrees that expert testimony is not 

“needed for every situation.” Id. at 29. Yet if expert 

testimony is required in this case, where there is a total 

absence of structure, it is unclear when it would not be 

required. 

II.

The district court’s predicament on remand shows the 

difficulty with the majority’s holding. Assuming that SAP 

does not renew its indefiniteness arguments, the district 

court will have to construe the claims as coterminous with

the claimed functions, because the specification discloses 

no algorithms to which the functions can be limited. See

35 U.S.C. § 112 ¶ 6. Such “pure functional claiming” is 

the very practice that § 112 ¶ 6 is designed to prevent. 

Noah, 675 F.3d at 1318 (“This court imposed the algorithm requirement to prevent purely functional claiming 

when a patentee employs a special purpose computerimplemented means-plus-function limitation.”); Aristocrat

Techs. Austl. Pty. Ltd. v. Int’l Game Tech., 521 F.3d 1328,
ELCOMMERCE.COM v. SAP AG 5

1333 (Fed. Cir. 2008) (“The point of the requirement that 

the patentee disclose particular structure in the specification and that the scope of the patent claims be limited to 

that structure and its equivalents is to avoid pure functional claiming.”); Med. Instr. & Diag. Corp. v. Elekta AB, 

344 F.3d 1205, 1211 (Fed. Cir. 2003) (“If the specification 

is not clear as to the structure that the patentee intends 

to correspond to the claimed function, then the patentee 

has not paid that price but is attempting to claim in 

functional terms unbounded by any reference to structure 

in the specification.”). 

Nor could the district court rely on expert testimony 

to limit the otherwise boundless functional construction 

because it would “contradict” the intrinsic record, which 

contains no such limitations. Helmsderfer v. Bobrick 

Washroom Equip., Inc., 527 F.3d 1379, 1382 (Fed. Cir. 

2008); see also Phillips v. AWH Corp., 415 F.3d 1303, 1315 

(Fed. Cir. 2005) (quoting Metabolite Labs., Inc. v. Lab. 

Corp. of Am. Holdings, 370 F.3d 1354, 1360 (Fed. Cir. 

2004) (“In most cases, the best source for discerning the 

proper context of claim terms is the patent specification 

wherein the patent applicant describes the invention.”

(internal quotation marks omitted)); Finisar Corp. v. 

DirecTV Grp., Inc., 523 F.3d 1323, 1328 (Fed. Cir. 2008)

(“[W]hile helpful, extrinsic sources . . . cannot overcome 

more persuasive intrinsic evidence.”). 

Indefiniteness under § 112 ¶ 2 is meant to prevent 

such boundless claim constructions. AllVoice Computing 

PLC v. Nuance Commc’ns, Inc., 504 F.3d 1236, 1240 (Fed. 

Cir. 2007) (“The test for definiteness asks whether one 

skilled in the art would understand the bounds of the 

claim when read in light of the specification.”). Indeed, 

indefiniteness is part of claim construction, both of which 

are questions of law. Noah, 675 F.3d at 1311 (“Whether a 

claim complies with the definiteness requirement of 35 
6 ELCOMMERCE.COM v. SAP AG

U.S.C. § 112 ¶ 2 is a matter of claim construction . . . .”); 

see also Datamize, LLC v. Plumtree Software, Inc., 417 

F.3d 1342, 1348 (Fed. Cir. 2005) (“In the face of an allegation of indefiniteness, general principles of claim construction apply.”). Just as there is no requirement for 

expert testimony when construing means-plus-function 

claims to cover the corresponding structure, expert testimony is not needed to hold the claims indefinite when no 

structure is disclosed. Default Proof, 412 F.3d at 1302. 

The majority nevertheless states that expert testimony is required, because the indefiniteness inquiry must be

conducted from the point of view of one skilled in the art. 

Majority Op. at 28. Without expert testimony, the majority reasons, the district court was unable to discuss the 

specification’s description of structure in light of “the 

knowledge of persons of skill in the field of the invention.” 

Id. That is not, as I understand it, what it means to view 

claim construction or indefiniteness from the perspective 

of one of skill in the art. Although both claim construction and indefiniteness are analyzed from the perspective 

of a skilled artisan, Finisar, 523 F.3d at 1328 (citing 

Phillips, 415 F.3d at 1312–13), the “hypothetical person 

having ordinary skill in the art” is a “legal construct . . . 

akin to the ‘reasonable person’ used as a reference in 

negligence determinations,” In re Rouffet, 149 F.3d 1350, 

1357 (Fed. Cir. 1998); see also Kimberly-Clark Corp. v. 

Johnson & Johnson, 745 F.2d 1437, 1454 (Fed. Cir. 1984) 

(describing the hypothetical skilled artisan as “an imaginary being possessing ‘ordinary skill in the art’ created by 

Congress to provide a standard of patentability”). Intrinsic evidence, not extrinsic, is most pertinent to determine 

how that hypothetical person would view the relevant 

claim terms. Phillips, 415 F.3d at 1317. 

While the majority is correct that patentees need not

“reproduce” in the specification “information routinely 
ELCOMMERCE.COM v. SAP AG 7

possessed by persons in the field of the invention,” Majority Op. at 24, the obligation to provide adequate corresponding structure for means-plus-function claims is 

separate from the enablement requirement. “‘[A] patentee cannot avoid providing specificity as to structure 

simply because someone of ordinary skill in the art would 

be able to devise a means to perform the claimed function.’” Function Media, L.L.C. v. Google Inc., 708 F.3d 

1310, 1319 (Fed. Cir. 2013) (quoting Blackboard, Inc. v. 

Desire2Learn Inc., 574 F.3d 1371, 1385 (Fed. Cir. 2009)). 

To permit such unbounded functional claiming would 

contravene the purpose of § 112 ¶ 2 by “‘allow[ing] the 

patentee to claim all possible means of achieving a function.’” Id. (quoting Blackboard, 574 F.3d at 1385).

III.

In holding that there was a “total absence of structure” in the ’903 patent, the district court considered each 

of the eleven means-plus-function elements, including all 

nine functions in claim 37, and found that none was 

supported by the requisite algorithm for softwareimplemented means-plus-function claims. The district 

court concluded that the Data Transfer Engine (“DTE”) 

and Data Collection Site (“DCS”)—which elcommerce 

argued were corresponding structures—were described 

solely in functional terms that did no more than restate 

the claimed functions. Claim Construction Op. at *8 

(citing Blackboard, 574 F.3d at 1383). On appeal, elcommerce devoted only two pages of its opening brief to 

identifying purported algorithms for the claimed functions, and neglected to even mention two of the functions

recited in claim 37.1

1 Specifically, elcommerce does not contest that the 

functions of “detecting” and “responding to” a problem 

 
8 ELCOMMERCE.COM v. SAP AG

The district court’s indefiniteness holding should be 

affirmed, because the ’903 patent’s specification discloses 

no algorithms corresponding to the eleven means-plusfunction terms. The first means-plus-function element of 

claim 37, for example, recites “means for monitoring 

changed supply-related data at independent supply chain 

sites within the supply chain.” ’903 patent col. 15 ll. 30–

31. Elcommerce argues the DTE and the DCS provide 

adequate structure for this function. 

No algorithm is disclosed. The specification states only that “[t]he DTE monitors the local system continuously,

and takes whatever information is available,” id. col. 1 ll. 

64–66, and that the DCS is a location where inbound data 

“is monitored,” id. col. 3 ll. 7–9. An algorithm must 

“provid[e] some detail about the means to accomplish the 

function,” Finisar Corp., 523 F.3d at 1340–41, and cannot 

“‘simply describe[ ] the function to be performed,’” Blackboard, 574 F.3d at 1384 (quoting Aristocrat, 521 F.3d at 

1334). In this case, the specification’s description of the 

DTE and the DCS “simply describes the function to be 

performed”: monitoring changed supply-related data. 

Such language “describes an outcome, not a means for 

achieving that outcome.” Id.

The majority cites two other portions of the specification that are meant to support the “monitoring changed 

supply-related data at independent supply chain sites” 

function. The first reference states that the DTE “looks 

for changes to data,” ’903 patent col. 5 l. 63, but this again

restates the claimed function and substitutes “looks for” 

instead of “monitors.” The second reference states that 

the DTE “uploads new data to the [DCS],” id. col. 5 ll. 63–

condition lack a corresponding algorithm. Surely, this 

court should at the very least affirm the invalidity of 

claim 37 on this basis. 

 
ELCOMMERCE.COM v. SAP AG 9

64, and “the DTE takes data in any size or format,” id. col. 

5 l. 59. This merely repeats another claimed function in 

claim 37—“means for uploading and collecting, from each 

supply chain site, the extracted data to a data collection 

site.” Id. col. 15 ll. 39–40 (emphasis added). “[D]isclosure 

as to one function” cannot “fill the gaps in a specification 

as to a different, albeit related, function.” Noah, 675 F.3d 

at 1319. 

Nor do the flow charts provide the requisite algorithm. Figure 1E (depicted below), for example, does no 

more than restate other means-plus-function elements—

including “extract[ing] data,” “translat[ing] data,” “format[ting] data,” and “upload[ing] data”—and thus does 

not provide the requisite algorithm for any one function. 
10 ELCOMMERCE.COM v. SAP AG

The first box in Figure 1E instructs “extract data,” which 

is merely a simplified version of another claimed function—“means for extracting, at each supply chain site, the 

supply-related data to be monitored.” ’903 patent col. 15 

ll. 32–33. The box does not explain how this function is 

accomplished, nor do the other boxes in Figure 1E provide 

any guidance in this respect. Rather, they simply restate 

other, separate means-plus-elements: the functions of 

“translating,” “uploading and collecting,” or “formatting” 

data, as recited in claim 37.2 The “means for monitoring 

changed supply-related data” limitation therefore lacks a 

2 Claim 37 recites, in relevant part: 

means for extracting, at each supply chain site, 

the supply-related data to be monitored, wherein the data is maintained in plural formats located among the supply chain sites, at least one 

of the supply chain sites corresponding to an 

independent entity in the supply chain, being 

independent of another supply chain site;

means for translating the data to a common format;

means for uploading and collecting, from each 

supply chain site, the extracted data to a data 

collection site;

means for formatting, at the data collection site, a 

portion of the collected data, retrieved from at 

least one of the supply chain sites other than 

the site of the user, into one of a plurality of 

views, responsive to criteria selected by a user 

associated with a supply chain site, for presentation to the user, the portion of formatted data 

being dependent on access rights granted to the 

user’s supply chain site . . . .

’903 patent col. 15 ll. 32–48 (emphases added). 

 
ELCOMMERCE.COM v. SAP AG 11

corresponding algorithm and is indefinite, rendering 

claim 37 invalid.

The eight remaining means-plus-function elements in 

claim 37 are similarly unsupported by adequate structure. 

Because the analysis above renders claim 37 invalid, 

however, there is no need to separately consider the 

remaining functions.3 

Independent claim 22 contains one means-plusfunction element: “[I]nput means for allowing a user 

associated with a supply chain site to query the data 

collector for supply-related data retrieved from one of the 

supply chain sites other than the site of the user . . . .” Id.

col. 14 ll. 49–52. On appeal, elcommerce argues the 

publisher provides corresponding structure, but the 

specification’s explanation of the publisher “‘simply describes the function to be performed.’” Blackboard, 574 

F.3d at 1384 (quoting Aristocrat, 521 F.3d at 1334). The 

publisher is described as something that “receives query 

requests” from the various independent supply chain 

sites. ’903 patent col. 6 ll. 18–23. It provides no more 

detail than that already contained in the claim language. 

Id. col. 14 ll. 49–51 (claiming “input means for allowing a 

user . . . to query the data collector for supply-related 

data”). 

3 Contrary to elcommerce’s argument on appeal 

that the DTE is corresponding structure for the “means 

for formatting” function, Appellant’s Br. 46, the majority 

determines that the publisher supports that limitation, 

Majority Op. at 26. In any event, this analysis is irrelevant to the ultimate question of claim 37’s validity because claim 37 contains eight other indefinite means-plusfunction elements, seven of which the majority does not 

even address. 

 
12 ELCOMMERCE.COM v. SAP AG

The specification further states that the publisher is 

“for publishing data from the data collector upon request,” 

id. col. 2 ll. 46–47, which likewise restates the “means for 

publishing” limitation in claim 37.4 Rather than providing “some explanation of how the computer performs the 

claimed function,” the specification only “‘describes an 

outcome, not a means for achieving that outcome.’” 

Blackboard, 574 F.3d at 1384 (quoting Aristocrat, 521 

F.3d at 1334). Accordingly, independent claim 22 is 

invalid for indefiniteness, thereby invalidating dependent 

claims 23 through 30, 32, and 33. 

IV. 

The majority states that “[t]he ’903 patent provides 

over eight columns of ‘Detailed Description of the Invention,’ with frequent references to the twenty-four pages of 

graphs and diagrams.” Majority Op. at 26. It does not, 

however, identify one relevant algorithm in any of these 

pages of description, let alone one algorithm corresponding to each claimed function. Instead it holds that expert 

testimony is required to find the claims indefinite. 

Courts routinely identify corresponding structure 

without the aid of expert testimony when construing 

means-plus-function claims. See, e.g., Med. Instr. & Diag. 

Corp., 344 F.3d at 1212–20 (determining the corresponding structure by analyzing the specification, and disagreeing with the patentee’s expert testimony). The pernicious 

result of the majority’s holding will be to deter district 

courts from performing that routine analysis, and to

encourage boundless functional claiming. 

4 Claim 37 states, in relevant part: “means for publishing the formatted data view to the user’s supply chain 

site.” ’903 patent col. 15 ll. 49–50 (emphasis added). 

 
ELCOMMERCE.COM v. SAP AG 13

As discussed, none of these eight columns or twentyfour pages of graphs and diagrams contains algorithms 

corresponding to the eleven means-plus-function claims. 

The claims are therefore indefinite, and expert testimony 

is neither required—nor permitted—to remedy the total 

absence of structure. For these reasons, I would affirm 

the district court’s holding that the asserted system 

claims are invalid for indefiniteness.