In a post-Williamson decision, “compliance mechanism” is a means-plus-function element that does not comply with the requirements under §112.
Cindy Chen | January 20, 2016
Media Rights Technologies, Inc. v. Capital One Financial Corp.
September 4, 2015
Before O’Malley, Plager, and Taranto. Opinion by O’Malley.
In Williamson v. Citrix Online, LLC, the Federal Circuit relaxed the presumption against interpreting a claim element as a means-plus-function element in the absence of the word “means”. In this first decision applying the Williamson standard, the Federal Circuit interpreted the claim term “compliance mechanism” as a means-plus-function element within the scope of §112, 6th paragraph.
Two Federal Circuit cases are pertinent to the Court’s decision in Media Rights. The first is Inventio AG v. ThyssenKrupp Elevator Americas Corp., 649 F.3d 1350 (Fed. Cir. 2011). The claims at issue related to a technology for modernizing a conventional elevator system, and recited in part:
installing at least one modernizing device and connecting the at least one modernizing device to said floor terminals and said at least one computing unit for reading the destination signal, for converting the destination signal into at least one call report and for controlling the elevator control by way of the call report.
The Federal Circuit determined that the term “modernizing device” was not an MPF element. Extensive structural descriptions in the claims and the specification collectively provided a sufficiently definite structure for the term “modernizing device”—i.e., an electrical circuit. In particular, the claim language described the “modernizing device” as an electrical circuit (e.g., by describing the modernizing device’s connections to floor terminals and a computing unit, as well as its functions of reading, converting, and transmitting signals). Further, the specification described not only the internal physical components of the “modernizing device”, but also the operation of those components, as well as their interplays with other components within the larger elevator system, in carrying out the modernizing device’s functions.
And then came the Federal Circuit’s decision in Williamson v. Citrix Online LLC, 770 F.3d 1371 (Fed. Cir. 2015). In Williamson, the Federal Circuit abandoned the “strong” presumption that a limitation lacking the word “means” is not an MPF element subject to §112, 6th paragraph. Instead, the standard should be whether the limitation, when read in light of the specification, “fails to ‘recite sufficiently definite structure’ or else recites ‘function without reciting sufficient structure for performing that function.’”
Applying this standard, the Federal Circuit analyzed the claims at issue relating to a “distributed learning” system for creating a virtual classroom. The relevant claim recited in part:
a distributed learning control module for receiving communications transmitted between the presenter and the audience member computer systems and for relaying the communications to an intended receiving computer system and for coordinating the operation of the streaming data module.
The Federal Circuit determined that the term “distributed learning control module” was an MPF element. The claim language and the specification described the functions of the “distributed learning control module”, but such functional descriptions did not inform the module’s structure (e.g., by describing interactions between the module and other components within the larger system).
Against this background, we turn to the decision at hand. Media Rights owns U.S. Patent No. 7,316,033 (the “033 patent”). The 033 patent describes a technology for preventing illegal copying and/or sharing of electronic copyrighted materials.
An important aspect of the prevention technology is the “compliance mechanism”, which couples to a user’s computer, in order to restrict the output of protected media content from a system (e.g., web server) to the user’s computer, and to restrict the movement and/or use of the protected media content on the user’s computer
Independent claim 1 is representative, and recites:
A method of preventing unauthorized recording of electronic media comprising:
activating a compliance mechanism in response to receiving media content by a client system, said compliance mechanism coupled 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 mechanism by 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 device coupled to said compliance mechanism via said data output path, for selectively restricting output of said media content.
Media Rights sued Capital One for infringement. Media Rights alleged that Capital One’s website employed an infringing compliance mechanism that secured the delivery of digital content and media to Capital One’s customers. Capital One moved to invalidate the 033 patent under 35 U.S.C. §101 as being directed to a patent ineligible abstract idea, and also under 35 U.S.C. §112, 2nd paragraph as being indefinite.
The district court invalidated the 033 patent on the indefiniteness ground, which the Federal Circuit affirmed in the present decision. Neither the district court, nor the Federal Circuit reached the §101 issue.
What killed the 033 patent was the term “compliance mechanism”. Capital One argued that “compliance mechanism” was an MPF element subject to the requirements of §112, 6th paragraph, but as the 033 patent failed to disclose a corresponding structure for the “compliance mechanism”, the claims should be invalidated as indefinite.
The Federal Circuit agreed.
In determining that the “compliance mechanism” term was an MPF element, the Federal Circuit first looked to the words of the term “compliance mechanism” itself:
– The term “compliance mechanism” is not commonly understood by those skilled in the art as connoting any particular structure.
– Citing Mass. Inst. of Tech. v. Abacus Software, 462 F.3d 1344 (Fed. Cir. 2006), the Federal Circuit emphasized that it has “never found that the term ‘mechanism’—without more—connotes an identifiable structure; certainly, merely adding the modifier ‘compliance’ to that term would not do so either.”
The Federal Circuit then looked to the claim language surrounding the term:
– Nothing in the claims of the 033 patent implied that the “compliance mechanism” term was used as a substitute for a definite structure (e.g., an electrical circuit).
– The claims described the “compliance mechanism” only in terms of its functions.
Finally, the Federal Circuit looked to the specification of the 033 patent:
– The specification disclosed several seemingly separate and independent embodiments, which collectively described that the “copyright compliance mechanism” could “include” a coder/decoder, an agent program, a skin, a user ID generator, a system hook, a wave shim, or a custom media device drive (see the figure below, which had been reproduced from the 033 patent). However, in the absence of any description of any concrete relationship between any of those elements, Media Rights was considered to have disclaimed an interpretation of the specification as disclosing a single structure of the “compliance mechanism” containing all of those elements.1 Rather, the disparate description implied that none of elements was mandatory for the “copyright compliance mechanism” to perform its functions.
The specification disclosed only a “copyright compliance mechanism”, which the Federal Circuit found was “narrower than the structure [Media Rights] claims as the ‘compliance mechanism’.”
The specification described how the “copyright compliance mechanism” is connected to various parts of a larger computer system, but did not describe the structure of the “copyright compliance mechanism” itself.
Trying to avoid an MPF interpretation, Media Rights analogized “compliance mechanism” to the “modernizing device” term in Inventio. However, the Federal Circuit readily distinguished one from the other.
Unlike Inventio, the claims and specification 033 patent lacked an “extensive structural description” of the “compliance mechanism”. The intrinsic record did not indicate that the “compliance mechanism” term was a substitute for a clearly structural term, such as the electrical circuit in Inventio. The intrinsic record also lacked a description of the internal physical construction of the “compliance mechanism”, or how the internal components of the mechanism worked together to performed the mechanism’s specific functions.
In any event, referring to the new Williamson standard, the Federal Circuit noted:
In Inventio, however, the Court was applying our now-superseded case law, which imposed a heavy presumption against finding a claim term to be in means-plus-function format. Because we apply no such heavy presumption here, and the description of the structure to which Media Rights points is far less detailed than in Inventio, we do not believe Inventio carries the weight Media Rights attaches to it.
Having determined that “compliance mechanism” was an MPF term, the Federal Circuit next determined whether the specification of the 033 patent disclosed a corresponding structure for performing each of the compliance mechanism’s recited functions. After the usual analysis, the Federal Circuit answered in the negative, finding that the specification failed to provide an operative algorithm for a number of the compliance mechanism’s recited functions.
Pick a strategy—to be means-plus-function, to be structural, or to be both—and draft the specification accordingly. Realize that sometimes, means-plus-function claiming is unavoidable.
If the main strategy is to pursue means-plus-function claims, then the specification should be drafted so as to describe sufficient structure corresponding to the desired scope, so as to avoid a similar problem as Media Rights in which the term “compliance mechanism”, read in light of the specification, was narrowed to a “copyright compliance mechanism”.
Silence in the specification can disclaim as well as an express description.
 More particularly, the Federal Circuit agreed with the district court that “while the specification identified components of a possible structure, Media Rights disclaimed that all those components, or even any specific subsection of them, are necessary to perform the recited functions.”