United States: Means-Plus-Function Claims And The Search For Adequate Structural Support

In Media Rights Technologies, Inc. v. Capital One Financial Corp., No. 2014-1218 (Fed. Cir. Sept. 4, 2015), the Federal Circuit affirmed the district court's determination of invalidity for indefiniteness.  It found the claims at issue to be means-plus-function claims, and lacking adequate support in the specification for the two disputed claim terms' recited functions.  This case follows in the wake of Williamson v. Citrix Online, LLC, 792 F. 3d 1339 (Fed. Cir. 2015) (en banc), where the en banc Federal Circuit expressly overruled the "strong" presumption that limitations lacking the word "means" are not subject to 35 U.S.C. § 112, ¶ 6 (pre-AIA).

Media Rights filed suit against Capital One, alleging infringement of U.S. Patent No. 7,316,033 ("the '033 patent"), entitled "Method of Controlling Recording of Media."  The '033 patent prevents unauthorized recording via a "compliance mechanism," which diverts incoming media content protected by law or agreement from being outputted by a system, in order to stop the illegal copying or sharing of that content.

All of the claims include the limitation "compliance mechanism," as shown by illustrative claim 1:

'033 patent col. 36 11. 19-34 (emphases added).

On the same day that Capital One filed its opening claim construction brief in district court, it also filed a motion for judgment on the pleadings for invalidity under 35 U.S.C. §§ 101 and 112(b).  As the motion largely turned on claim construction of the '033 patent, the district court held a Markman hearing and heard argument on a Rule 12(c) motion that same day.  It concluded that all of the claims of the '033 patent are invalid because they all contain the terms "compliance mechanism" and "custom media device," which were deemed indefinite. 

On appeal, the Federal Circuit affirmed the invalidity of all the claims in the '033 patent for reciting "compliance mechanism"—a means-plus-function term lacking an adequately disclosed structure to perform all of its function. 

The parties as a threshold matter disputed whether "compliance mechanism" is a mean-plus-function term.  Under 35 U.S.C. § 112, ¶ 6 (pre-AIA), means-plus-function claim limitations are permitted "as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof."  These types of claims are construed to only cover "the structure, materials, or acts described in the specification as corresponding to the claimed function and equivalents thereof."  Williamson, 792 F. 3d at 1347. 

While a claim that uses the word "means" "invokes a rebuttable presumption that § 112, ¶ 6 applies," Apex Inc. v. Raritan Comput., Inc., 325 F.3d 1364, 1371 (Fed. Cir. 2003) (citation omitted), the opposite is also true: there is a presumption that a claim lacking the term "means" is not a means-plus-function claim.  A party can overcome the presumption against applying § 112, ¶ 6, by "demonstrat[ing] that the claim term fails to 'recite sufficiently definite structure' or else recites 'function without reciting sufficient structure for performing that function.'"  Williamson, 792 F. 3d at 1349 (quoting Watts v. XL Sys., Inc., 232 F.3d 877, 880 (Fed. Cir. 2000)).  The Federal Circuit asks "if the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6."  Robert Bosch, LLC v. Snap-On Inc., 769 F.3d 1094, 1099 (Fed. Cir. 2014).

The '033 patent's term "compliance mechanism" does not contain the word "means," and the parties agreed that the claims recited functions for the "compliance mechanism term."  The parties did not agree, however, whether the specification provided sufficient structure for performing the recited functions.  Media Rights analogized the "compliance mechanism" term to "modernizing device" described in Inventio AG v. Thyssenkrupp Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir. 2011), overruled by Williamson, 792 F. 3d 1339.  Unlike Inventio's "modernizing device" term, the Federal Circuit found the '033 patent's "compliance mechanism" was not used as a substitute for anything that might connote a definite structure.  In Inventio, the specification supported the use of a "modernizing device" as a substitute for an electrical circuit.  The '033 patent's specification, however, does not disclose adequate structural support for the "compliance mechanism" term. 

Further, the court noted that it has never found the term "mechanism," without more, to connote an identifiable structure, and adding the modifier "compliance" to "mechanism" does not make an identifiable structure.  See Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344, 1354 (Fed. Cir. 2006).  Inventio also applied the prior law teaching that the absence of the term "means" gaves rise to a strong presumption against finding a claim to be a means-plus-function format.  That has now been overruled en banc.

After determining that the claims are means-plus-function claims, the court construed the claims.  All the parties agreed that the term "compliance mechanism" performs four functions: (1) controlling data output by diverting a data pathway; (2) monitoring the controlled data pathway; (3) managing an output path by diverting a data pathway; and (4) stopping the play of media content.  "Where there are multiple claimed functions, as there are in this case, the patentee must disclose adequate corresponding structure to perform all of the claimed functions."  Media Rights, No. 2014-1218, slip op. at 12.  Failure to do so renders the claim term indefinite, according to the court.  In addition, because the recited functions are computer-implemented functions, the disclosed structure must be an algorithm for performing the claimed function.  A general purpose computer or microprocessor does not provide adequate structural support to the term. 

The '033 patent specification failed to disclose an operative algorithm for two of the four claimed elements, i.e., for "controlling data output" and "managing output path" functions.  Expert testimony showed the C++ source code that Media Rights claimed was the operative algorithm returned only error messages.  Further, the specification did not disclose sufficient structure for the "monitoring" function.  The set of rules in the specification that Media Rights relied upon provides no detail about the rules themselves or how the "copyright compliance mechanism" determines whether the rules are being enforced.  Without further disclosure, the "monitoring" function lacks adequate structural support, and the term "compliance mechanism" was held indefinite.

Media Rights joins Williamson as a cautionary tale of invalidity by indefiniteness.  Claims with terms lacking specific structural support linked to the recited functions may be considered means-plus-function by the court.  To avoid this result, patentees should specifically claim the structure and include sufficient support in the specification.  Media Rights also reinforces the importance of drafting patent specifications as legal documents that provide adequate technical disclosure.   

The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.