Absence of “Means” Means §112(f) Did Not Apply

In Zeroclick, LLC v. Apple Inc., [2017-1267] (June 1, 2018) the Federal Circuit vacated and remanded the district court determination that claims of U.S. Patent Nos. 7,818,691 and 8,549,443 were invalid for indefiniteness, finding the district court failed to undertake the relevant inquiry and make related factual findings to support its conclusion that the asserted claims recited means-plus-function terms.

At issue were the limitations “program that can operate the movement of the pointer (0)” and “user interface code being configured to detect one or more locations touched by a movement of the user’s finger on the screen without requiring the exertion of pressure and determine therefrom a selected operation” which the district court determined were means-plus-function limitations.

To determine whether § 112, para. 6 applies to a claim limitation, the presence or absence of the word “means” is important.  The failure to use the word “means” creates a rebuttable presumption that § 112, ¶ 6 does not apply. However, this presumption
can be overcome, and § 112, ¶ 6 will apply, if the challenger demonstrates that the claim term fails to recite sufficiently definite structure or else recites function without reciting sufficient structure for performing that function.  The essential inquiry remains whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.

The Federal Circuit noted that neither of the limitations at issue uses the word “means,” so presumptively, § 112, ¶ 6 does not apply to the limitations.  The Federal Circuit noted that while Apple argued that the limitations must be construed under § 112, ¶ 6, it provided no evidentiary support for that position, and thus the presumption against
the application of § 112, ¶ 6 to the disputed limitations remained unrebutted. The Federal Circuit found that the district court’s discussion was couched in conclusory language, relying on Apple’s arguments, contrasting them against Zeroclick’s contentions, but pointing to no record evidence that supports its ultimate conclusion that  § 112, ¶ 6 applies to the asserted claims.

The Federal Circuit said that the district court legally erred by not giving effect to the unrebutted presumption against the application of § 112, ¶ 6.  The Federal Circuit noted that this was erroneous for at least three reasons: (1) the mere fact that the disputed limitations incorporate functional language does not automatically convert the words into means for performing such functions; (2) the court’s analysis removed the terms from their context, which otherwise strongly suggests the plain and ordinary meaning of the terms; and (3) the district court made no pertinent finding that compels the conclusion that a conventional graphical user interface program or code is used in
common parlance as substitute for “means.”  The Federal Circuit concluded that the district court thus erred by effectively treating “program” and “user interface code” as nonce words and concluding in turn that the claims recited §means-plus-function limitations.


PTO Erred by Not Identifying Algorithm Corresponding to §112, ¶ 6 Element Before Invalidating Claims

In IPCOM GmbH & Co. v. HRC Corp., [2016-1474] (July 7, 2017) the Federal Circuit found that the Board failed to conduct a proper claim construction of the “arrangement for reactivating the link” claim limitation, and we vacate and remand the obviousness rejections based on that limitation.

The IPR challenged U.S. Patent No. 6,879,830 (’830 patent), which describes and claims a method and system for handing over a mobile phone call from one base station to another base station.  The Federal Circuit noted that while the Board correctly identified  “arrangement for reactivating the link” was a means plus function element, it failed to properly construe that limitation. The Board rejected IPCom’s proposed three-step algorithm allegedly disclosed in the ’830 specification for performing the “arrangement for reactivating the link” function, but the Board failed to identify what it believed to be the correct algorithm from the specification; that omission led to an incomplete construction of the claim limitation and is incompatible In re Donaldson.  §112, ¶ 6 [now 112(f)] applies regardless of the context in which the interpretation of means-plus-function language arises, i.e., whether as part of a patentability determination in the PTO or as part of a validity or infringement determination in a court.  The Federal Circuit said that the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.

The Federal Circuit vacated the Board’s claim construction of the “arrangement for reactivating the link” limitation, and remanded for the Board to identify the corresponding algorithm (if any) in the specification in the first instance.  The Federal Circuit further vacated the determination of obviousness because the Board never identified any algorithm for the “arrangement for reactivating the link” limitation, the Board further erred by failing to evaluate whether the prior art disclosed that algorithm (or its equivalents).


“Means” Does Not Always Mean “Means Plus Function”

In Skky, Inc. v. Mindgeek, S.A.R.L., [2016-2018] (June 7, 2017), the Federal Circuit affirmed the PTAB decision in IPR2014-01236 that all of the challenged claims in  U.S. Patent 7,548,875 were invalid for obviousness.

The ‘875 patent relates to a method of delivering audio and/or visual files to a wireless device.  The prosecution lasted almost seven years, and the claims were only allowed after they were amended to recite a “wireless device means.”  The Board determined that “wireless device means” was not a means plus function element, but even if it was it did not require a device with multiple processors.

The Federal Circuit said that in determining whether a claim term invokes § 112 ¶ 6, the essential inquiry is not merely the presence or absence of the word “means” but whether the words of the claim are understood by persons of ordinary skill in the art to have a sufficiently definite meaning as the name for structure.  It is sufficient if the claim term is used in common parlance or by persons of skill in the pertinent art to designate structure, even if the term covers a broad class of structures and even if the term identifies the structures by their function.

The Federal Circuit agreed that We agree with MindGeek that “wireless device means” does not invoke § 112 ¶ 6 because it recites sufficient structure.  Although the term uses the word “means” and so triggers a presumption, the full term recites structure, not functionality. The claims do not recite a function or functions for the wireless device means to perform, and “wireless device” is “used in common parlance . . . to designate structure. The Federal Circuit further found that “wireless device means” did not require multiple processors, noting that at least one disclosed embodiment was exclusively software, and thus it would be improper to construe  “wireless device means” to require multiple processors.

The Federal Circuit found that substantial evidence supported the Board’s claim construction, and its resulting finding of obviousness.