PTAB Strategies and Insights Newsletter – March 2022: Federal Circuit Rules on Two Ways Plus Function/Undefined Cases | Sterne, Kessler, Goldstein & Fox LLC

The Federal Circuit released two cases this week to clarify when a functional claim feature should be considered a de facto means-plus-function claim that requires structural detail to meet the indefiniteness standard.

The first was a precedent decision, Dyfan LLC v Target Corp., case no. 2021-1725, and the second was an unprecedented decision, VDPP LLC v Vizio Inc.case no. 2021-2040.

In Dyfan, Stoll J. writing for the Court (Lourie, Dyk, and Stoll) was reviewing a Western District of Texas court’s decision of indefiniteness under 35 USC § 112, 2nd paragraph, for lack of sufficient structure based on the court of district concluding de facto claims 35 USC § 112, 6th paragraph, format. The Court reversed and remanded the finding that the claims should not have been converted to means-plus-function claims.

Representative claim 15 and the disputed terms (emphasis in original) are:

15. A system, comprising:
a building . . . including:
a first broadcast short range communication unit. . .
a second broadcast short-range communication unit. . .
code configured to be executed by at least one of the
multiple mobile devices, the code, when executed, is configured to:
cause the display, via a display of the at least one mobile
device, an option to cause a first visual information and a second
visual information to be transmitted via at least one mobile device. . .

receive an acknowledgment of receipt, from the first broadcast
short-range communication unit and via the first wireless
communication protocol, one or more first broadcasts
messages comprising the at least one first value,
in response to the indication of the receipt, from the first
short-range broadcast communication unit and via the first
wireless communication protocol, of the first(s)
broadcast messages including the at least one first value: cause to
be sent, from said at least one mobile device and via a second
wireless communication protocol and an internet protocol on
the Internet at least in part, at least a first message. . .
at least one server configured to communicate with
at least one mobile device via the Internet. . .
said code, when executed, is further configured to:
receive, from at least one server and via the second
wireless communication protocol, the first response message
including the first information relevant to the location,
in response to receiving, from the at least one server and
via the second wireless communication protocol and the Internet
Protocol on the Internet at least in part, from the first answer
message including the first location information:
be transmitted, via the at least one mobile device, the first visual
information based on the first information relevant to the location,
receive, from at least one server and via the second
wireless communication protocol, the second response message
comprising the second location information,
after the first visual information is caused to be transmitted
based on the first location-relevant information; after at least
a mobile device is moved through the building; and in response to
reception, from the at least one server and via the second wireless
communication protocol, of the second response message
including second location information: cause to be
transmit, via the at least one mobile device, the second visual
information based on second location-relevant information
;
or the system is configured such that the first visual
the information is automatically issued without requiring
communication of said at least one first message with the first
broadcast the short range communication unit after receiving the
indication of receipt of one or more first broadcasts
messages, and the second visual information is automatically
be issued without requiring the communication of the au
at least a second message with the second short range broadcast
the communication unit after receiving the indication of the
reception of the second broadcast message(s)
.

In VDPP, Judge Lourie writing for the Court (Newman, Lourie, and Taranto) was reviewing a California Central District court’s decision on indefiniteness under 35 USC § 112(b) for lack of a support structure based on the district court concluding de facto claims 35 USC § 112(f), format. The Court reversed and remanded the finding that the claims should not have been converted to means-plus-function claims.

The representative claim 1 at issue and the terms challenged (emphasis in original) are:

1. A device comprising:
a storage room adapted to:
store one or more image frames;
and
a processor adapted to:
obtaining a first image frame from a first video stream;
expand the first image frame to generate a modified image
frame, in which the modified image frame is different from the first
picture frame;
generate a bridge frame, in which the bridge frame is a non-
solid color, in which the bridge frame is different from the first
image frame and different from modified image frame;
merge the modified image frame with the bridge frame to
generating a blended modified image frame; and
display the blended edited image frame.

Both panels found indefiniteness and whether a claim is a means plus a function are legal questions considered de novo, the latter relying on Williamson vs. Citrix Online, LLC, 792 F.3d 1339, 1346 (Fed. Cir. 2015). The Court explained that in the absence of explicit “means” language, a presumption forbids conversion to a means claim, but “claims are nevertheless subject to § 112 ¶ 6 where the limitation in question has not ” has no commonly understood meaning and is not generally perceived by a person skilled in the field. the art of connoting a particular structure.’ Media Rights Techs., Inc. v. Capital One Fin. Corp.800 F.3d 1366, 1372 (Fed. Cir. 2015). Dyfan, at 10.

Dyfan

For code/application claim features, the Dyfan The Panel relied on the patent owner’s unrebutted expert testimony that the challenged terms refer to a class of structure for a POSA. Dyfanat 13. Here the Court also relied on Zeroclick, LLC v Apple Inc.891 F.3d 1003, 1007 (Fed. Cir. 2018) (finding that the impugned terms are used “not as generic terms or black-box narratives of structure or abstractions, but rather as code-specific references conventional…, existing in the state of the art at the time of the inventions.”))

For the system claim function, the Dyfan The panel said that an abstract term of “system” can be a nonce term, but then the panel carefully went through the long features of the claim and found “the limitation of the ‘system’ in the clause in which the base derives antecedent to the “system” set forth in the preamble, which claim states include “a building” having “a first short-range broadcast communication unit”, “a second short-range broadcast communication unit”, a “code executed by at least one ‘mobile device’ and ‘at least one server.’ …Each of these limitations set forth in the claims are structural components of the “system”. Dyfanat 17 years old.

VDPP

VDPP quotes to Dyfan for several points, and therefore follows from Dyfan.

The Court was evaluating the “processor” and “storage” functions. The Court first pointed out that rebutting the presumption requires the challenger to provide at least some evidence that a POSA would not have understood the boundaries to recite a sufficiently accurate structure. VDPP, to 6. Yet Vizio provided none, so the district court’s analysis was flawed. The Court then pointed out that the District Court ignored intrinsic evidence showing that the impugned terms connoted the structure of a POSA. Identifier.p. 7. Thus, “processor” and “storage” are not just black boxes performing functions. Identifier.

Finally, the Court emphasized that the challenger’s arguments on appeal went to step (2) of the s. 112(f) analysis of whether there was sufficient structure, not to the step (1), if the terms of the claim were a de facto means claim.

A key takeaway from these cases is indicated by the Dyfan panel – the absence of the word “means” in a claim does not mean that courts should circumvent the presumption that a claim does not invoke s. 112 ¶ 6/112(f) or absolve courts of their duty to assess whether this presumption has been rebutted.

Comments are closed.