Unavoidable performance of a claim still constitutes infringement. As such, it may be generally prudent to avoid unnecessary “determining” steps, for example, that would require further underlying processing even though the end result is the same. Even if such determining may seem pretty generic, a device that inherently provides the same effect may not infringe. (This is of course to the extent that such determining is truly superfluous and not required to overcome the prior art, etc.)
Background / Facts: Among the patents being asserted here by Microsoft at the ITC is one entitled “Context Sensitive Menu System/Menu Behavior,” which generally discloses and claims a computer system having a graphical user interface that offers “context sensitive” menus which are displayed in a position “in proximity” to a selected computer resource. For example, when a user selects one of his or her contacts, a menu pops-up for the contact that contains a menu item for the user to initiate a call to the contact, which would not be part of a menu for photographs. The accused Android operating system provides similar context menus that are centered on the screen and occupy most of it. It is undisputed that, at a minimum, the menu is often at or near the location of the selected object. As the court notes, “[o]n a small-screen device, that may always be so, because it may be effectively impossible to be anything but proximate, for lack of space.”
Issue(s): Whether the placement of the context menu in relation to the graphical representation of the selected resource must be an explicit, specially programmed function in order to be infringing.
Holding(s): No. “The ALJ’s sole basis for finding the display-in-proximity requirement not to be met for the main group of products was a notion of ‘deliberate’ positioning that cannot be justified. No such notion is fairly found in the claim or the agreed-on construction. … [T]he claim speaks only of results, not the details of underlying functions. Nor would it support the ALJ’s claim construction to observe that, on a small screen, the display may always be in proximity to the location of the object’s representation. Unavoidable proximity is still proximity. And in any event the practical consequence for small screens does not alter the evident meaning of the claim language, which is not limited to small-screen devices.”