Broad Claim Terms and Inadequate Support in Specification Render Patent Invalid
By Joseph Herndon --
In Media Rights Technologies, Inc. v. Capital One Financial Corp. (September 4, 2015), the Federal Circuit first transformed a broadly described element in a claim into a means-plus-function claim term, and then found the disclosure to be inadequate for the term rendering the claims indefinite under § 112.
When claim drafting, a patentee must be mindful that 35 U.S.C. § 112, ¶ 6 can be invoked in many ways. Even when unintended, if inadequate structure is recited in the claim, or broad/vague claim terms are used, 35 U.S.C. § 112, ¶ 6 can rear its head.
In this case, Media Rights sued Capital One alleging infringement of U.S. Patent No. 7,316,033 (the "'033 Patent"). The '033 Patent is generally directed to preventing illegal copying or sharing of copyrighted media.
Claim 1 is illustrative of the invention, and it recites:
A method of preventing unauthorized recording of electronic media comprising:
activating a compliance mechanismin response to receiving media content by a client system, said compliance mechanismcoupled to said client system, said client system having a media content presentation application operable thereon and coupled to said compliance mechanism;
controlling a data output pathway of said client system with said compliance mechanismby diverting a commonly used data pathway of said media player application to a controlled data pathway monitored by said compliance mechanism; and
directing said media content to a custom media devicecoupled to said compliance mechanismvia said data output path, for selectively restricting output of said media content.
The District Court concluded that (1) the term "compliance mechanism" is indefinite and, (2) because every claim of the '033 Patent contained the term, all of the claims of the '033 Patent are invalid.
Claim Term – "compliance mechanism"
With respect to the "compliance mechanism" claim term, the District Court found that the claim language itself stated that the "compliance mechanism" was activated in response to the client system receiving media content, that it controlled a data output path, and that it monitored a controlled data pathway. Because this language only describes how the components of the invention are combined and the functions performed by the "compliance mechanism," without suggesting anything about the structure of the mechanism itself, the District Court determined that the claim language did not recite sufficient structure for the "compliance mechanism" term itself, and so the term must be a means-plus-function term. Next, following basic means-plus-function claim construction, the District Court considered what functions it performs, and then determined what structure identified in the specification performs these functions. Four functions were identified in the claims as being performed by the "compliance mechanism":
(1) "controlling a data output of [the] client system . . . by diverting a commonly used data pathway of [the] media player application to a controlled data pathway" (Claim 1);
(2) monitoring the controlled data pathway (Claims 1, 10 and 19);
(3) "managing an output path of [the] client system . . . by diverting a commonly used data pathway of [the] media player application to a controlled data pathway" (Claim 10); and
(4) "stop[ping] or disrupt[ing] the playing of [the] media content at [the] controlled data pathway when said playing of said media file content is outside of [the] usage restriction applicable to said media file" (Claims 10 and 19).
Because the structure for computer-implemented functional claims must be supported by a specific algorithm, and the specification here failed to describe "an algorithm whose terms are defined and understandable," the District Court determined that the "compliance mechanism" term is indefinite for lack of written description support.
Is "compliance mechanism" a means-plus-function claim term?
On its face, the claim term "compliance mechanism" does not seem like it would invoke § 112, ¶ 6, since the claim lacks the traditional "means for . . ." claim language.
For claim terms that use "means for . . ." language, it is presumed that § 112, ¶ 6 applies, and the opposite is true as well -- for claim terms lacking the word "means for . . .", it is presumed that § 112, ¶ 6 does not apply. However, the presumption that § 112, ¶ 6 does not apply 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.'"
MPEP § 2181 describes a general three prong analysis to determine if § 112, ¶ 6 is invoked:
1. Does the claim use magic phrase "means for" or "steps for"?
2. Is the "means for" modified by functional language? and
3. Does the phrase "means for" lack any modification by structure, material or acts for achieving the specified function?
Here, even though the magic "means for . . ." terms were not used, the Federal Circuit found that 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. Rather, the claims simply state that the "compliance mechanism" can perform various functions. Therefore, the phrase "compliance mechanism" lacks any modification by structure, and was instead, used for pure functional claiming.
Consequently, the claim term was interpreted as a means-plus-function claim term, and then held indefinite by the Federal Circuit because nowhere does the specification define "compliance mechanism" in specific structural terms. The Federal Circuit found that description alone of 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" is insufficient to avoid the application of § 112, ¶ 6. Input and output "mechanisms" will not provide the necessary written description support for the component itself.
Here, because the specification does not disclose a specific algorithm for all of the four recited functions associated with the "compliance mechanism" means-plus-function claim limitation, it is treated as if the specification has no supporting algorithm disclosed at all. For the specific claim language, the specification fails to disclose an operative algorithm for both the "controlling data output" and "managing output path" functions. These two functions both require diverting a data pathway. The cited algorithm by Media Rights does not explain how to perform the diverting function, making the disclosure inadequate.
The Federal Circuit concluded that the claim term "compliance mechanism" is indefinite, and thus, the Federal Circuit did not need to address the additional arguments that the "custom media device" term is not indefinite, or Capital One's alternative argument that the District Court's invalidity decision also can be affirmed on 35 U.S.C. § 101 grounds.
In this case, the Federal Circuit followed well-established case law that provides a strict requirement for how to describe and claim a "means for [performing] . . ." a specific computer-implemented function. Disclosure of only a general purpose computer as structure for a function in a means-for claim term amounts to pure functional claiming, and will result in the claim being found to be indefinite. Thus, a specification must sufficiently disclose an algorithm to transform a general purpose microprocessor to the special purpose computer for adequate support for the means-for claim term. The algorithm must describe, in detail, how to perform each of the recited claim functions.
Notably, in the decision, the Federal Circuit stated that "[w]e have never found that the term 'mechanism' -- without more -- connotes an identifiable structure." Certain claim terms, such as "mechanism" or "module" often are found by courts to invoke § 112, ¶ 6. As a practice tip, if it is the intention of the claim drafter to avoid § 112, ¶ 6, it seems a good idea to avoid use of the magic "means for . . ." language, as well as the problematic vague terms "mechanism" and "module". Sometimes using these terms, while written with good intention hoping to provide broad claim scope, can cause undesirable claim interpretation. However, if such terms are used, dependent claims can further define the specific structure of what comprises the "module" or "mechanism" for backup support.
While the Federal Circuit found the claims invalid due to indefiniteness, it would have been interesting to see if such claims could have survived the § 101 challenge.
Media Rights Technologies, Inc. v. Capital One Financial Corp. (Fed. Cir. 2015)
Panel: Circuit Judges O'Malley, Plager, and Taranto
Opinion by Circuit Judge O'Malley