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 does not recite sufficient structure to perform the claimed functions.” Uniloc 2017 LLC v. Google LLC, No. 18-cv-00501-JRG-RSP (E.D.Tex. Feb. 4, 2020) (affirmed, Uniloc 2017 LLC v. Google LLC, No. 18-cv-00501-JRG-RSP (E.D. Tex. Mar. 25, 2020). Uniloc argued that 35 USC § 112, ¶ 6 should not be invoked because “the claim language itself recites sufficient structure because the ‘means for’ limitations collectively define the structural programming of ‘video encoder.’” However, the court, in citing Net MoneyIN, Inc. v. VeriSign, 545 F.3d 1359, 1366 (Fed. Cir. 2008), noted that “the claims here require that the video encoder comprises means for accomplishing various functions, so ‘there must be a recitation of structure that is a component of the [video encoder] to rebut the presumption.’” (Alterations in original). Further, the court found that the specification “does not provide an algorithm or otherwise that describes how to encode labels, let alone an algorithm for encoding labels in a random order.” Therefore, the court held that claim 1 was indefinite.

Following the claim construction order, Google filed a motion for summary judgment of invalidity. The court, in citing H-W Tech., L.C. v. Overstock.com, Inc., 758 F.3d 1329, 1331 (Fed. Cir. 2014), held that “[s]ummary judgment is a proper means for deciding invalidity due to indefiniteness.” Since the court’s claim construction order held “that the only asserted claim in this case is indefinite,” the court granted Google’s motion for summary judgment of invalidity.

Lessons for Practice

When drafting software claims that may be interpreted as means-plus-function, including specific structure in the claims can prevent § 112(f) (formerly § 112, ¶ 6) from being applied. However, as this case illustrates, when the term “means for” is used in the claim, merely including structure in the preamble of the claim will not rebut the presumption that § 112(f) applies. Instead, the structure needs to be linked to the claimed function in the body of the claim. Also, when drafting software claims, remember to include a description in the specification of how structure performs the claimed function to prevent a finding of indefiniteness if § 112(f) is invoked.