35 U.S.C. § 112

How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn

A patent plaintiff saw its jury trial victory vacated when the court granted a defense motion for judgment as a matter of law under FRCP 50(b), finding that the plaintiff had not proved that the accused products had structure corresponding to claimed means.  SPEX Technologies, Inc. v. Apricorn, No. CV 16-07349 JVS (AGRx) (C.D. Cal. Aug. 10, 2020). The jury found infringement of claims 11 and 12 of U.S. Patent No. 6,088,802. Those claims recite: 11. A peripheral device, comprising: security means for enabling one or more security operations to be performed on data; target means for enabling a defined interaction with a host computing device; means for enabling communication between the security means and the target means; means for enabling communication with a host computing device; and means for mediating communication of data between the host computing device and the target means so that the communicated data must first pass through the security means. 12. A peripheral device as in claim 11, wherein the target means comprises means for non-volatilely storing data. During claim construction, the court had found that an “interface control device 910” disclosed in the ’802 patent specification was the structure corresponding to the recited “means… Read More »How to (Not) Prove Infringement of a Means-Plus-Function Patent Claim: SPEX Technologies, Inc. v. Apricorn

Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)

The Federal Circuit has modified a panel decision and denied a rehearing en banc in a closely watched § 101 case, American Axle & Manufacturing v. Neapco Holdings. The original decision had found all the claims, which were directed to a method of manufacturing driveline propeller shafts, ineligible subject matter (previously covered in this post). The new panel decision maintained that result for two of the independent claims but remanded on a third independent claim. (Stay tuned for a follow-up post on the en banc denial, which revealed a fractured court with multiple concurrences and dissents and a 6-6 tie vote.) Much of the controversy centered on the subject matter of the patent at issue, U.S. Patent No. 7,774,911—not software or medical diagnostics, as in most applications of § 101, but instead a purely mechanical invention. All three independent claims were for “a method for manufacturing a shaft assembly of a driveline system.” The patent focused on the problem of vibrations in the driveshaft, by making a liner to fit inside the driveshaft. Vibrations came in three flavors: bending mode, which involves vibrations curving the shaft along its length; torsion mode, twisting the shaft; and shell mode, flexing circumferentially around… Read More »Mechanical Inventions Still Potentially Ineligible: American Axle & Mfg. v. Neapco Holdings (Part 1 of 2)

District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Indefiniteness was decided in a claim construction order from the Northern District of California in VTT Technical Research Centre of Finland v. SiTime. The court corrected a claim by inserting a missing element, but also invalidated all the claims for indefiniteness because the means-plus-function element “drive or sense means” lacked sufficient structure. VTT thus won a battle but lost the war. VTT is a Finnish state-owned nonprofit research company, including for microelectromechanical systems (MEMS). SiTime is a MEMS manufacturer. VTT is suing for infringement of U.S. Patent No. 8,558,643, covering a MEMS device used in semiconductors to reduce deformation as a result of temperature fluctuations. Independent claim 29 states: 29. A method for designing a micromechanical device comprising a semiconductor element capable of deflecting or resonating and comprising at least two regions having different material properties, drive or sense means functionally coupled to said semiconductor element, the method comprising choosing a basic semiconductor material for the semiconductor element, choosing at least one n-dopant to be added to the semiconductor material, designing the inner structure of the semiconductor material, wherein said designing of the inner structure comprises determining at least two n-dopants, n-dopant concentrations and/or crystal orientations of n-doped material, and… Read More »District Court Corrects Patent by Inserting Missing Temperature Range, Finds Claims Indefinite for Insufficient Structure: VTT Technical Research Centre of Finland v. SiTime

Means-Plus-Function Construction Can Lead to Indefiniteness

In Unicorn Global Inc. v. Golab, Inc. No. 3:19-CV-0754-N (N.D. Tex. May 26, 2020), the Northern District of Texas construed several disputed terms of U.S. Patent No. 9,376,155 and U.S. Patent No. 9,452,802, and found claims to be indefinite means-plus-function claims without having structure described in the specifications. The patents are directed to personal transportation devices known as hoverboards which include a divided platform with wheels on opposite ends. A rider stands on the platform and tilts halves of the platform to control movement of the hoverboard. Most notable of the construed claim terms was “limiting shaft.” Plaintiff and patent owner Unicorn conclusorily asserted that the term should be given its plain and ordinary meaning. Defendant and alleged infringer Golab argued that “limiting shaft” was means a plus-function term and could not be defined. The court started by stating that the term “sounds like a structural element” and was presumed not to be means-plus-function because there was no specific recitation of “means.” However, the court determined that the presumption was rebutted because “limiting shaft” clearly described a function, i.e., limiting relative rotation between two objects connected by the shaft, and further because Unicorn failed to provide evidence that described a structure… Read More »Means-Plus-Function Construction Can Lead to Indefiniteness

Use of Passive Voice Insufficient to Connote Structure in MPF Analysis

The District Court for the Northern District of California recently issued a claim construction order in Zoho Corporation v. Sentius International, LLC, finding that the claim limitation “means for compiling the source material image from at least the plurality of discrete pieces” was indefinite.  The present action arose from a declaratory judgement action brought about by Zoho alleging that it did not infringe Reissued Patent No. RE43,633.  While both parties agreed that 35 U.S.C. ¶ 6 (means-plus-function) applied, the parties diverged on the question of whether the specification disclosed sufficient structure for the compile function.  During a means-plus-function analysis, the court engages in a two-step inquiry to construe the claim limitations at issue as set forth in Williamson v. Citrix Online, LLC.  First, the court identifies the claimed function, and, second, the court determines “what structure, if any, disclosed in the specification corresponds to the claimed function.”  The Federal Circuit, in Noah Sys., Inc. v. Intuit, Inc., has stated that a structure corresponds to the claimed function if “the specification or the prosecution history clearly links or associates the structure to the function recited in the claim.”  In its proposed claim construction, the Patent Owner, Sentius, alleged that the corresponding… Read More »Use of Passive Voice Insufficient to Connote Structure in MPF Analysis

Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

In its second time considering a patent, the Federal Circuit upheld the district court’s ruling on noninfringement but overturned its ruling of lack of enablement in McRO v. Bandai Namco. The decision rested on the claim construction of one term, “vector.” That construction excluded the accused products from the scope of the patent, but it likewise excluded examples that the defendants had offered of embodiments that were not enabled by the patent. McRO owns the sole patent at issue, U.S. Patent No. 6,611,278, which covers a “method for automatically animating lip synchronization and facial expression of animated characters.” The patent describes automating the modeling of an animated character’s mouth according the phoneme being spoken by the character. A phoneme is the smallest unit of spoken speech, i.e., a single sound. For each phoneme, a “morph target” is applied to a model of the neutral position of the character’s mouth. Each morph target is a set of “deltas,” each of which is a vector representing the change in position of a vertex of the mouth model from the neutral position to a phoneme-specific position. Each delta can be scaled by a “morph weight” between 0 and 1. Here is a representative… Read More »Federal Circuit Uses Claim Construction to Overturn Lack of Enablement: McRO v. Bandai Namco

Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite

The Eastern District of Texas held that the only asserted claim of U.S. Patent No. 6,452,515 was indefinite because “the term ‘[means] for encoding these labels in a random order’” (alterations in original) invokes 35 USC § 112 ¶ 6, and “the specification of the ‘515 Patent does not disclose an algorithm for performing the encoding function required by this limitation.” Uniloc 2017 LLC v. Google LLC, No. 18-cv-00501-JRG-RSP (E.D.Tex. May 1, 2020). The asserted claim from the ‘515 Patent, claim 1, is reproduced here: 1. A video encoder for processing a sequence of animated pictures, said encoder comprising:      means for dividing a screen window occupied by said sequence into X rows and Y columns;      means for separately encoding each one of the X·Y parts of each picture of the sequence thus obtained; and      means for associating, to each of said parts, a specific label indicating a position of the part in the window, and for encoding these labels in a random order. During a prior claim construction hearing, the court found that claim 1 invoked 35 USC § 112, ¶ 6 because the claim uses “the words ‘means’ followed by a function. Moreover, the claim language… Read More »Lack of Algorithm in Specification Renders Means-Plus-Function Claim Indefinite

Claim Interpretation and Definiteness of Terms of Degree

In Kitsch LLC v. Deejayzoo, LLC (Case No. LA CV19-02556 JAK (RAOx)) the Central District of California interpreted claims of U.S. Patent No. 10,021,930 that included terms of degree as being sufficiently definite under 35 U.S.C. § 112. The case was initiated by Plaintiff Kitsch, who sought a judgment declaring invalidity of the ‘930 patent. The ‘930 patent is owned by Defendant Deejayzoo and is directed toward an improved shower cap that reduces volume experienced by a user of the cap. Claim 1 of the ‘930 patent recites, in relevant part: 1. A covering apparatus comprising: a unitary material; . . . wherein the unitary material comprises an outer layer and an inner layer; wherein the outer layer comprises a fabric; wherein the outer layer is water repellent; wherein the inner layer is polyurethane[;] . . . and wherein the covering apparatus is a shower cap. During claim construction, Kitsch argued to the Court that claim 1 was indefinite under 35 U.S.C. § 112 and could not be construed because the phrase “water repellent” was relative and failed to provide the necessary definitive metes and bounds. Specifically, Kitsch argued that all fabrics are water repellent to some degree, providing supportive… Read More »Claim Interpretation and Definiteness of Terms of Degree

EDTx Hands Down Indefiniteness Ruling in Semcon v. TCT Mobile

The Eastern District of Texas recently issued a claim construction ruling with a couple interesting rulings on indefiniteness in the case of Semcon IP v. Louis Vuitton and TCT Mobile (April 29, 2020). TCT Mobile is a mobile communication company whose brands include Alcatel, Blackberry, and TCL Communications. Semcon IP is a patent assertion entity whose patents cover “fundamental technology for adjusting the processor clock and voltage to save power based on the operating characteristics of the processor.” The patents include Nos. 7,100,061; 7,596,708; 8,566,627; and 8,806,247, all part of the same family. Semcon sued TCT Mobile, along with fashion brand Louis Vuitton, for infringement as part of an assertion campaign against multiple companies in the Eastern District of Texas. While the court construed twelve terms in its 64-page ruling, the most interesting rulings were on indefiniteness of two terms appearing in dependent claims of the asserted patents. The court found “sleep state” definite but “said change in operating conditions” indefinite. The basis for questioning the term “sleep state” is that the term only appears unqualified in the claims, not the description. Instead, the description only discusses a “deep sleep state.” Semcon contended that the deep sleep state discussed in… Read More »EDTx Hands Down Indefiniteness Ruling in Semcon v. TCT Mobile

Is Inconsistency Indefiniteness under 35 U.S.C. § 112? TVnGo Ltd. V. LG Electronics, Inc.

Claims of five patents directed to toggling between television and Internet content have been held invalid under 35 U.S.C. § 112(b) based on indefiniteness of claim terms directed to content “overlays” on a display screen. TVnGo Ltd. V. LG Electronics, Inc., Civil No. 18-10238 (RMB/KMW) (D. N.J. April 16, 2020). The patents-in-suit are U.S. Patent Nos. 8,132,220; 9,124,945; 9,392,339; 9,407,969; and 9,794,621; the indefinite claim terms, identified during a claim construction proceeding, are “overlay activation criterion” and “overlay activation signal.” The court found these claim terms, indisputably not “terms of art, nor defined by the Specifications,” indefinite under Nautilus, Inc. v. Biosign Instruments, Inc. (U.S. S. Ct. 2014) because they “create irreconcilable inconsistencies into the Patents-in-Suit” in two ways. First, the terms have “intra-patent inconsistencies,” i.e., within respective patents. Second, the terms have “inter-patent inconsistencies,” i.e., across all of the patents. The court identified three intra-patent inconsistencies: First, claims of each of the ’220 and ’969 patents explicitly recited “overlay activation criterion” as being provided “over the Internet,” where other claims and the Specifications “state that ‘user command information’ may be a component of ‘overlay activation criterion’ and that such information is provided at the user’s premises and not over… Read More »Is Inconsistency Indefiniteness under 35 U.S.C. § 112? TVnGo Ltd. V. LG Electronics, Inc.