CAFC Vacates Indefiniteness Ruling on TrackTime Patent, Affirms Invalidity Finding on Related Patent in Amazon Dispute

The U.S. Court of Appeals for the Federal Circuit (CAFC) issued a precedential decision Thursday in TrackTime, LLC v. Amazon.com Services LLC, vacating a district court’s indefiniteness ruling on one TrackTime patent. It also affirmed a jury verdict of invalidity on a related patent asserted against Amazon.com Services LLC and Audible, Inc.

TrackTime owns U.S. Patent Nos. 8,856,638 and 8,862,978, which claim methods and systems for navigating within a multimedia file using a time-correlated transcript, called a synchronization index, on a mobile device. The index makes possible “tap-to-jump” functionality, in which a user displays the synchronization index on a touch-sensitive mobile device and taps a portion of the text to play the corresponding portion of the multimedia file. The index also allows a user to annotate the transcript and share the annotated version with others.

TrackTime filed a lawsuit against Amazon.com Services LLC and several other entities for infringement in the U.S. District Court for the District of Delaware in October 2018. Amazon contended that the asserted claims of the ‘978 patent, claims 1 through 10, all of which depend from claim 1, were invalid for indefiniteness, and that claim 9 of the ‘638 patent was invalid for anticipation by a reference called LiveNote.

In regard to the ‘978 patent, the district court construed two disputed limitations, “executable program code configured to facilitate annotation” in claim 1 and “executable program code configured to synchronously play…multimedia” in claim 2, as means-plus-function terms under 35 U.S.C. Section 112(f). After finding Section 112(f) applicable, the district court concluded that the specification did not disclose a sufficient algorithm or procedure explaining how the code performs the claimed functions. In a July 2021 claim construction order, it therefore ruled the asserted claims invalid for indefiniteness.

TrackTime appealed, arguing the “executable program code” limitations should not be treated as means-plus-function terms under the approach set out in the CAFC’s 2022 decision in Dyfan, LLC v. Target Corp., which issued after the district court ruled on this issue. The CAFC agreed that further analysis was warranted in light of the intervening Dyfan decision. Writing for the court, Circuit Judge Richard Taranto explained that the district court resolved the Section 112(f) question largely on the intrinsic record. He noted that it did so without conducting the inquiry into extra-patent usage that can be essential to determining whether a disputed phrase names or describes a class of structure sufficient to perform the claimed function. The court stated that, on remand, the focus of the Section 112(f) analysis should be on whether the disputed limitations, read in full and in context, recite enough structure to perform the claimed functions. It identified the relevant functions as annotation and synchronous play carried out on a mobile computing device and integrated with the claims’ other functionality.

The court also noted the existing expert declarations did not directly address whether the “executable program code” limitations, understood in light of those functions, were generally known in the art as names for particular code. The CAFC vacated the indefiniteness ruling and remanded for a new determination of the Section 112(f) question, leaving it to the district court’s discretion whether to permit new evidence or argument on remand.

The dispute over the ‘638 patent arose from a jury trial in September 2023 on claim 9, which the jury found both not infringed and invalid on several grounds. Those grounds included anticipation by LiveNote, a commercial transcript management program described in three Amazon trial exhibits, an installation guide, a tutorial, and a user guide. The district court denied TrackTime’s post-trial motions for judgment as a matter of law (JMOL) and for a new trial in a September 2024 order.

On appeal, TrackTime argued it was entitled to JMOL of no anticipation on three grounds. It contended that LiveNote does not disclose performing a data lookup, does not disclose the claimed mobile computing device, and does not disclose a touch-sensitive input interface capable of receiving human touch gestures. The CAFC found the first argument forfeited because it had not been raised before the district court.

Moreover, with respect to the mobile computing device limitation, the court pointed to the LiveNote user guide’s express disclosure of use on a tablet PC, which the ‘638 patent itself identifies as an example of a mobile computing device. It also relied on testimony from Amazon’s expert, Dr. Dan Schonfeld, that the user guide showed a user could tap the tablet rather than click. On the touch-sensitive input interface limitation, the court relied on the user guide’s disclosure of a tablet pen. It also cited testimony from Amazon’s expert, Dr. Dan Schonfeld, that LiveNote’s disclosures would have been understood by a relevant artisan to be operable on a touchscreen device “with a pen or a finger.” The court held that “there was sufficient evidence to find that LiveNote discloses claim 9’s touch-sensitive input interface.”

The court also rejected TrackTime’s alternative argument that the anticipation verdict was against the clear weight of the evidence and warranted a new trial. Applying Third Circuit precedent, the court explained that a new trial is warranted only where a verdict “cries out to be overturned or shocks [the] conscience,” and found TrackTime’s argument amounted to a routine dispute between experts that was within the jury’s competence to resolve. Since the anticipation ground was sufficient to affirm, the court said it did not need to reach TrackTime’s remaining arguments.

Ultimately, the CAFC affirmed the district court’s judgment as to the ‘638 patent, including the denial of JMOL and a new trial, vacated the indefiniteness ruling on the ‘978 patent, and remanded for further proceedings consistent with the opinion.