Means-Plus-Function Archives

Means-Plus-Function

Not a Bullseye: Defendant Must Rebut Presumption That Claims Lacking “Means” Language Don’t Fall Under § 112 ¶ 6

by Paul Devinsky | Mar 31, 2022 | Patents

Reversing a district court finding of indefiniteness under 35 U.S.C. § 112 ¶ 6, the US Court of Appeals for the Federal Circuit found that the district court erred by ignoring unrebutted evidence that the challenged claim terms would have been understood to connote sufficiently definite structure to avoid means-plus-function construction. Dyfan, LLC v. Target Corp., Case No. 21-1725 (Fed. Cir. Mar. 24, 2022) (Lourie, Dyk, Stoll, JJ.)

Dyfan sued Target for infringement of two patents directed to location-based message delivery. During claim construction proceedings, Target argued that certain claim limitations should be construed as means-plus-function limitations and that the specification failed to disclose the requisite corresponding structure. The district court found that three claim terms were subject to § 112 ¶ 6. For the terms “code” and “application,” the court assigned a “special-purpose computer function” as the corresponding structure and found that the specification did not disclose a requisite algorithm for the functions of the computer. The district court also found that the claim term “system” was subject to § 112 ¶ 6 because it recited purely functional language without disclosing sufficient corresponding structure, and that it was unclear which of the recited components performed the recited function. The district court concluded that all three terms were indefinite under § 112 ¶ 2 for lack of corresponding structure. Dyfan appealed.

Reviewing de novo, the Federal Circuit first addressed whether the claim language invoked § 112 ¶ 6. As the Court had stated previously, there is a rebuttable presumption that a claim limitation is not drafted in a means-plus-function format if it does not contain the term “means.” However, that presumption can be overcome if a challenger demonstrates that the term fails to recite sufficiently definite structure. The Court also explained that for purposes of § 112 ¶ 6, certain “nonce words that reflect nothing more than verbal constructs” are tantamount to using the word “means.”

Turning to the case merits, the Federal Circuit first considered the terms “code” and “application.” Given the absence of “means” language, Target was required to show by a preponderance of the evidence that persons of ordinary skill in the art would not have understood those terms to connote structure considering the claim as a whole. The Court found that the district court erred in concluding that Target overcame the presumption that § 112 ¶ 6 did not apply. The Court relied on unrebutted testimony from Target’s expert witness that the district court ignored. The expert testified that both terms would have connoted structure, such as off-the-shelf software. The Court found that this unrebutted testimony demonstrated that neither claim limitation recited purely functional language.

The Federal Circuit explained that the district court failed to follow its 2018 decision in Zeroclick v. Apple. In that case, the Court reversed a district court’s finding that the claim terms “program” and “user interface” invoked § 112 ¶ 6, finding that both terms were references to conventional program code existing in the prior [...]

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Nailed It: Expert Must at Least Meet Ordinary Skill Level to Testify from POSITA Perspective

by Alexander P. Ott | Jan 27, 2022 | Patents

Addressing a US International Trade Commission (ITC) decision finding a § 337 violation as to one patent but no violation as to four other patents, the US Court of Appeals for the Federal Circuit reiterated that a technical expert must at least meet the level of ordinary skill in the art of the asserted patents to testify from the perspective of a person of ordinary skill in the art (POSITA), whether for claim construction, validity or infringement. Kyocera Senco Indus. Tools Inc. v. ITC, Case Nos. 20-1046, -2050 (Fed. Cir. Jan. 21, 2022) (Moore, C.J.; Dyk, Cunningham, JJ.)

In 2017, Kyocera filed a complaint at the ITC seeking a § 337 investigation based on infringement allegations for six patents directed to battery-powered gas spring nail guns. The investigation was assigned to the Chief Administrative Law Judge (ALJ), who, in the context of a Markman order, adopted Koki Holdings America Ltd.’s uncontested level of skill in the art as including “experience in powered nailer design.” After claim construction, Kyocera dropped one patent from the investigation and went forward with infringement under the doctrine of equivalents as the sole basis for violation for four other patents.

Prior to the evidentiary hearing, Koki moved to exclude Kyocera’s expert’s testimony due to their admission during deposition that they did not have the experience in powered nailer design required by the adopted level of ordinary skill in the art. The Chief ALJ held that the Federal Circuit’s decision in AquaTex Indus. v. Techniche Sols. expressly required that Kyocera’s expert’s testimony be excluded as to infringement under the doctrine of equivalents but permitted the expert to testify as to literal infringement on one patent and on claim construction. After the evidentiary hearing, the Chief ALJ issued an initial determination that relied, in part, on Kyocera’s expert to find a particular element satisfied on the one remaining patent where literal infringement was asserted, but ultimately found no infringement due to other claim limitations. The Chief ALJ’s noninfringement decision as to the one remaining patent was then overturned on review by the full ITC, which found a § 337 violation and issued a limited exclusion order.

Kyocera appealed the Chief ALJ’s exclusion of its expert’s testimony on doctrine of equivalents, and Koki cross-appealed on the Chief ALJ’s decision to allow Kyocera’s expert to testify as to literal infringement and claim construction. The Federal Circuit reversed the ITC’s decision, holding that it was error to permit any infringement testimony from Kyocera’s expert and explaining that a witness must at least have ordinary skill in the art to offer testimony from the perspective of a skilled artisan for claim construction, validity or infringement, whether literal or under the doctrine of equivalents.

Alexander Ott was a member of Koki’s ITC trial team and the Federal Circuit appeal team in this case.

As Due Process Recognizes, it’s Hard to Shoot at a Moving Claim Construction Target

by McDermott Will & Emery | Aug 5, 2021 | Patents

The US Court of Appeals for the Federal Circuit vacated several Patent Trial & Appeal Board (PTAB) decisions as violating due process and the Administrative Procedure Act (APA), referencing the parties’ inability to respond to the PTAB’s sua sponte construction of a term on which the parties had previously agreed. Qualcomm Inc. v. Intel Corp., Case Nos. 20-1589; -1594 (Fed. Cir. July 27, 2021) (Moore, C.J.)

After Qualcomm sued Intel over a patent directed to techniques for generating a power tracking supply voltage for a circuit that processes multiple radio frequency signals simultaneously, Intel filed six inter partes review (IPR) petitions challenging the validity of Qualcomm’s patents. In each petition, Intel proposed that the claim term “a plurality of carrier aggregated transmit signals” meant “signals for transmission on multiple carriers at the same time to increase the bandwidth for a user.” Qualcomm proposed a different construction: “signals from a single terminal utilizing multiple component carriers which provide extended transmission bandwidth for a user transmission from the single terminal.” Neither party disputed that the signals were required to increase user bandwidth, either at the PTAB or in a parallel proceeding before the US International Trade Commission (USITC) where the USITC adopted a construction—including the increased bandwidth requirement.

However, during the oral hearing, one of the administrative patent judges (APJs) asked Intel counsel about the inclusion of the bandwidth limitation in the claim construction. No other APJ raised, or asked Qualcomm, any questions about the increased bandwidth requirement in the claim construction. The day after the hearing, the PTAB sua sponte ordered additional briefing on the meaning of other claim terms that had been extensively discussed at the hearing.

The PTAB ultimately issued six final written decisions concluding that all challenged claims were unpatentable. In doing so, the PTAB omitted any requirement that the signals increase or extend bandwidth in construing the term “a plurality of carrier aggregated transmit signals” to mean “signals for transmission on multiple carriers.” The PTAB also held that “means for determining a single power tracking signal” (power tracker limitation) was a means-plus-function limitation and that an integrated circuit (IC) board, the “power tracker 582,” was the corresponding structure.

Qualcomm timely appealed, arguing that 1) it was not afforded notice of, or an adequate opportunity to respond to, the PTAB’s construction of “a plurality of carrier aggregated transmit signals” and 2) that the PTAB’s construction of the power tracker limitation was erroneous for failing to include an algorithm in the corresponding structure.

NOTICE AND OPPORTUNITY TO RESPOND TO THE PTAB’S CONSTRUCTION

The Federal Circuit has discussed the administrative and notice requirements provided by the APA and due process in IPR proceedings: “[a] patent owner in [an IPR] is undoubtedly entitled to notice of and a fair opportunity to meet the grounds of rejection” (Belden v. Berk-Tek). The Court observed that for IPRs, the PTAB must “timely inform” the patent owner of “the matters of fact and law asserted” and, in terms of notice, “must provide ‘all interested [...]

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Logic to Modify: Even Deceptive Intent Does Not Bar Inventorship Correction

by Paul Devinsky | Sep 16, 2020 | Patents

The US Court of Appeals for the Federal Circuit vacated a district court invalidity determination finding that judicial estoppel prevented a patent owner from relisting an inventor previously removed for strategic litigation purposes. Egenera, Inc. v. Cisco Sys., Inc., Case Nos. 19-2015, -2387 (Fed. Cir. Aug. 28, 2020) (Prost, C.J.).

Egenera sued Cisco for infringement of a patent directed to a reconfigurable virtual network that included a “logic to modify” and transmit received messages. In response Cisco petitioned for inter partes review (IPR). During the IPR’s pendency, Egenera realized that all claim limitations were conceived of before inventor Schulter began working at the company, and petitioned the US Patent and Trademark Office (PTO) to remove Schulter as a listed inventor. The Patent and Trial Appeal Board (PTAB) declined to institute Cisco’s IPR, and the PTO granted Egenera’s petition to remove Schulter shortly thereafter.

During the litigation, the district court construed the patent claims’ “logic” terms as means-plus-function elements and concluded that the “logic to modify” limitation corresponded to a “tripartite structure” described in the specification. Cisco then asserted invalidity under pre-America Invents Act (AIA) § 102(f), contending that Schulter invented the tripartite structure, and that the patent therefore did not list all inventors. Egenera attempted to re-correct inventorship to include Schulter, but the court rejected the attempt. The district court found the patent invalid under § 102(f), reasoning that judicial estoppel precluded Egenera from “resurrecting” Schulter’s inventorship. Egenera appealed both the means-plus-function construction and the judicial estoppel finding.

The Federal Circuit first addressed whether Egenera could correct inventorship absent any judicial estoppel. The Court looked to the plain meaning of post-AIA § 256, which provides that “the error of omitting inventors . . . shall not invalidate the patent . . . if it can be corrected.” Notably, post-AIA § 256 removed the requirement that an inventorship error occur “without . . . deceptive intent.” The Federal Circuit stated it plainly: “‘Error’ is simply the incorrect listing of inventors” and does not exclude even deceptive intention. The Court explained that the inequitable conduct rules provide a safety valve for such actions, not § 256. The Court also noted that at the time Egenera removed Schulter as an inventor, no one had argued that “logic to modify” was means-plus-function language, which it presumptively was not. Egenera’s preferred construction of that term was consistent with its assertion that Schulter was not an inventor. The omission of Schulter as inventor was thus an “error” within the scope of § 256.

The Federal Circuit next turned to whether Egenera was judicially estopped from relisting Schulter as an inventor. Applying the First Circuit’s New Hampshire factors, the Federal Circuit looked to whether Egenera’s positions were inconsistent, whether its first position was successfully accepted by the court, and whether Egenera would derive an unfair advantage if not estopped. The Federal Circuit found that the district court erred in finding Egenera’s changing inventorship positions inconsistent. The Court explained that inventorship is complex and can depend on claim [...]

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Prior Art-Based Invalidity Analysis May Be Possible for Indefinite Claim

by Alexander P. Ott | May 27, 2020 | Patents

Addressing a decision by the US Patent and Trademark Office’s Patent Trial and Appeal Board (Board) declining to find certain claims unpatentable because they contained means-plus-function elements without any corresponding disclosed structure, the US Court of Appeals for the Federal Circuit affirmed the Board’s decision except as to one challenged claim where the means-plus-function element was recited as an alternative to a non-means-plus-function element. Cochlear Bone Anchored Solutions AB v. Oticon Medical, AB, Case Nos. 19-1105, -1106 (Fed. Cir. May 15, 2020) (Taranto, J.).

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