Board Erred in Failing to Apply § 112, ¶ 6 to “Mechanical Control Assembly”

In MTD Products Inc. v. Iancu, [2017-2292] (August 12, 2019), the Federal Circuit vacated the Board’s obviousness determination, finding that the Board erred in finding that the term “mechanical control assembly” was not a means-plus-function term governed by § 112, ¶ 6.

U.S. Patent No. 8,011,458 discloses a steering and driving system for zero turn radius (“ZTR”) vehicles. Both of the independent claims contain the phrase “mechanical control assembly.”

The “essential inquiry of whether a claim element invokes § 112, ¶ 6. 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. One way to demonstrate that a claim limitation fails to recite sufficiently definite structure is to show that, although not employing the word “means,” the claim limitation uses a similar nonce word that can operate as a substitute for “means” in the context of § 112, para. 6.” Generic terms like “module,” “mechanism,” “element,” and “device” are commonly used as verbal con-structs that operate, like “means,” to claim a particular function rather than describe a sufficiently definite structure. Even if the claims recite a nonce term followed by functional language, other language in the claim might inform the structural character of the limitation-in-question or otherwise impart structure to the claim term.

In assessing whether the claim limitation is in means-plus-function format, we do not merely consider an introductory phrase (e.g., “mechanical control assembly”) in isolation, but look to the entire passage including functions performed by the introductory phrase. The ultimate question is whether the claim language, read in light of the specification, recites sufficiently definite structure to avoid § 112, ¶ 6.

The Federal Circuit agreed with the Board that the term “mechanical control assembly” is similar to other generic, black-box words that it has held to be nonce terms similar to “means” and subject to § 112, ¶ 6 because the term does not connote sufficiently definite structure to one of ordinary skill in the art. The Federal Circuit further agreed that the rest of the claim language of the disputed phrase is primarily, but not entirely, functional. However the Federal Circuit said that the Board erred when it relied on the specification’s description of a “ZTR control assembly” to conclude that the claim term “mechanical control assembly” had an established structural meaning. The fact that the specification discloses a structure corresponding to an asserted means-plus-function claim term does not necessarily mean that the claim term is understood by persons of ordinary skill in the art to connote a specific structure or a class of structures.

The Federal Circuit found that the Board’s analysis implied that so long as a claim term has corresponding structure in the specification, it is not a means-plus-function limitation. This view would leave § 112, ¶ 6 without any application, because any means-plus-function limitation that met the statutory requirements, i.e., which includes having corresponding structure in the specification, would end up not being a means-plus-function limitation at all.

The Federal Circuit also disagreed with the Board’s interpretation of the prosecution history, finding that arguing that a limitation connotes structure and has weight is not inconsistent with claiming in means-plus-function format since means-plus-function limitations connote structure.

Given the lack of any clear and undisputed statement foreclosing application of § 112, ¶ 6, we conclude that the Board erred in giving dispositive weight to the equivocal statements it cited in the prosecution history.

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.