September 15, 2015
On September 4, 2015, in Media Rights Technologies, Inc. v Capital One Financial Corporation, the Court of Appeals for the Federal Circuit held that the term “compliance mechanism” in the patent at issue was a means-plus-function term under 35 U.S.C. 112(6). Affirming the Eastern District of Virginia’s holding, the court determined that the claimed “compliance mechanism” was indefinite for inadequate disclosure in the specification of corresponding structure for performing the stated functions. This case represents the latest guidance from the Federal Circuit on means-plus-function case law under section 112(6) (since recast as 35 U.S.C. 112(f)).
The patent-in-suit was directed to methods, systems, and computer readable media for preventing the unauthorized recording of electronic media. Illustrative claim 1 called for a “compliance mechanism” that was found to perform four functions, including “controlling data output” and “managing output path” functions. Each of these functions required a “data pathway.” The claim further required a “monitoring” function.
In its analysis of whether the claim terms were means-plus-function terms, the Federal Circuit initially noted that the parties did not disagree that the term “compliance mechanism” has no commonly understood meaning and is not generally viewed by one skilled in the art to connote a particular structure. Additionally, the court determined that the specification does not define the term in “specific structural terms.” The court accordingly held that the term “compliance mechanism” is therefore a means-plus-function term under section 112(6).
The court distinguished its previous decision in Inventio AG v. Thyssenkrupp in which the court held that the term “modernizing device” was a structural term because the specification described an electrical circuit, its internal components and how they operated as a circuit, and how the elements are connected together and perform the claimed functions. The court also noted that Inventio was decided under now-superseded case law that had imposed a “heavy” presumption against finding a claim term to be in means-plus-function format. Instead, the court now applies a rebuttable presumption that is not “heavy.” The court also noted that it has “never found that the term ‘mechanism’—without more—connotes an identifiable structure.
The Federal Circuit went on to hold that the specification of the patent-in-suit fails to disclose a corresponding structure for the claimed “controlling data output” and “managing output path” functions. The court noted that these functions are computer-implemented functions and therefore the structure disclosed in the specification must be more than a general purpose computer or microprocessor. Put another way, to satisfy section 112(6) for such terms, the specification must disclose an algorithm for performing each stated function. While the court stated that an algorithm may be expressed as a mathematical formula, in prose, in a flow chart, or in any other matter that provides sufficient structure, the court found that disclosure lacking in this case. The court noted that the two claimed functions of the patent-in-suit each require diverting a data pathway, but nothing in the disclosed algorithm or the disclosed source code describes how to perform the diverting function, thus “making the disclosure inadequate.”
The Federal Circuit also found that the specification did not disclose sufficient structure for the “monitoring” function. The patentee asserted that the specification disclosed a set of “rules” for monitoring the data pathway, these rules being intended to ensure that there was no unauthorized recording of electronic media. But the court held that this was not sufficient disclosure because the specification did not disclose any detail about the rules or how the rules were enforced.
Based on the lack of sufficient disclosure of structure to perform the stated functions of the means-plus-function terms, the Federal Circuit held that the patent claims were indefinite and invalid under section 112(6).
The Media Rights decision can be seen as an addition to the list of Federal Circuit decisions that provide guidance on which claim terms are means-plus-function claim elements and therefore require disclosure of corresponding structure in the specification to be valid under section 112(6) (now 112(f)) of the patent statute.
For more information on this decision, please contact Fitch Even partner Karl R. Fink.
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