Functional Language Made Claims Indefinite

In Media Rights Technologies, Inc. v. Capital One Financial Corporation, [2014-1218] (September 4, 2015), the Federal Circuit affirmed judgment on the pleadings that all of the claims of U.S. Patent No. 7,316,033 were invalid for indefiniteness for containing means plus function elements without an identification of the corresponding structure in the specification.  At issue was the claim term “compliance mechanism” which appeared in every claim of the patent, which related to the prevention of unauthorized recording of media.

The Federal Circuit started with Nautilus’ definition of that a claim is indefinite if it fails to inform those skilled in the art about the scope of the claim with reasonable certainty.  The Federal Circuit noted that a  those skilled in the art about the t he indefiniteness — that a claim is indefinite if its language “might mean several different things and no informed and confident choice is available among the contending definitions.”

The Federal Circuit next address whether “compliance mechanism” was a means plus function element, noting that it is well settled that claim limitation that uses the word “means” invokes a rebuttable presumption that §112, ¶6 [now §112(f)] applies, and that a claim term that does not use “means” invokes a rebuttable presumption that § 112, ¶6 does not apply.  However, the presumption against the application of § 112, ¶ 6 to a claim term lacking the word “means” can be overcome if a party can “demonstrate[] that the claim term fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.

Media Rights argued that “compliance mechanism” was analogous to “modernizing device” which was not a means-plus-function claim in Inventio AG v. Thyssenkrupp Elevator Ams. Corp., 649 F.3d 1350, 1357 (Fed. Cir. 2011).  However the Federal Circuit distinguished Inventio because “modernizing device” described an electric circuit, which has sufficient structure, while in the present case “the claims do not use the term ‘compliance mechanism’ as a substitute for an electrical circuit, or anything else that might connote a definite structure.”  The Federal Circuit found no guidance in the intrinsic record as to what structure is being referenced. The Federal Circuit said that describing how the “compliance mechanism” is connected to and interacts with the other components of the system, what processes the “compliance mechanism” performs, and what structural subcomponents might comprise the “compliance mechanism,” were not enough.  It was the specification’s disclosure in Inventio regarding how the “modernizing device” and its internal components operated as a circuit, that connoted sufficient structure, and that was missing from Media Rights’ specification.  The Federal Circuit also distinguished Inventio as applying a heavy presumption against the application of §112, ¶6, which the Federal Circuit eliminated earlier this year.

Having determined that “compliance mechanism” was in fact a means-plus-function element, the Federal Circuit then proceeded to identifying the corresponding structure, material, or acts described in the specification to which the claim term is limited.  The Federal Circuit noted that 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.  The Federal Circuit found that four functions were claimed, and the question is whether the specification discloses adequate structure to achieve all four of the claimed functions.

Because the functions are computer-implemented functions, moreover, the structure disclosed in the specification must be more than a general purpose computer or microprocessor, it must also disclose an algorithm for performing the claimed function.  The algorithm may be expressed as a mathematical formula, in prose, as a flow chart, or in any other manner that provides sufficient structure.

Relying on expert testimony, the Federal Circuit found that the disclosed portions of code in the specification did not explain how to perform at least one of the claimed function, making the disclosure inadequate.  The Federal Circuit also found a lack of disclosure of the means for performing another function, finding both a lack of detail and lack of explanation.  The Federal Circuit concluded that all the claims were invalid for indefiniteness.

Media Rights suggests that after Williamson v. Citrix Online, LLC, it more likely for functional language to be found to invoke §112(f), any time that functional language is used in a claim, the drafter should weigh the risk that §112(f), and provide an identification of corresponding structure, just in case.  When the invention is implemented by computer, the drafter must include the algorithm for all of the claimed functions.